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 .
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 .
DETAILED ACTION
Claims 1-8, 10, 12-19 and 21-23 of F.C. Rix, et al., US 18/253,088 (05/16/2023) are pending. Claims 4-8, 10, 12-19 and 21-23 are withdrawn as directed to non-elected Groups or not read on the elected species. Claims 1-3 are under examination on merits and are rejected.
Election/Restrictions
Pursuant to the restriction requirement, Applicant elected Group I (claims 1-5), with traverse, in the reply filed on 01/09/2026. Claims 6-8, 10, 12-19 and 21-23 drawn to non-elected Groups (I)-(VIII) are withdrawn from consideration pursuant to 37 CFR 1.142(b).
Pursuant to the election of species requirement, Applicant elected, without traverse, methacrylic acid as the species of the non-hydrolytic oxygen containing compound and trimethyl aluminum as the species of the hydrocarbyl aluminum in the Reply filed on 01/09/2026 for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Claims 1-3 read on the elected species. The elected species was searched and determined to be unpatentable as discussed in the 102/103 rejections below. Claims 4-5 are provisionally withdrawn from consideration pursuant to 37 CFR 1.142(b) as not reading on the elected species. See, MPEP § 803.02. The provisional Species Election Requirement is in Effect;
Applicant’s Traversal
Applicant first traverses the Restriction Requirement on the ground that there is no “serious burden” or “under burden” to searching each of the composition of claim 1, the process of claim 12 and the use of the composition of claim 10. Pages of 11-12, Improper Fragmentation of Product, Use, and Process Claims; Remarks submitted on 01/09/2026.
This argument is not considered persuasive because the instant restriction was issued under the unity-of-invention rules governing restriction in international applications under 35 U.S.C. 371 (see MPEP § 802; MPEP § 1893.03(d); 37 CFR § 1.499), therefore, MPEP 803 does not apply in the instant case. Under the applicable PCT rules there is no requirement of a serious search burden. The instant Application is an international application entering the National Stage under 35 U.S.C. 371. Under the rules governing multiple inventions under 35 U.S.C. 371 (see MPEP § 1893.03(d)), an international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (Rule 13.1). International Preliminary Examination Under Chapter II Of The PCT, Chapter 10, Unity of Invention, (Oct. 3, 2011). As such, in the instant case, there is no requirement that the Examiner prove or show a serious search burden.
Applicant further traverses the Restriction Requirement on the ground that there is unity of invention because the composition in claim 1 requires aliphatic hydrocarbon fluid and 1H NMR signal ratios, while Bergsma composition comprise toluene and without 1H NMR signal ratios. Pages of 12, Rebuttal of the "A Posteriori" Lack of Unity Analysis; Remarks submitted on 01/09/2026.
This traversal has been fully considered but not persuasive. As mentioned in the previous Office action that:
Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
See MPEP § 1893.03(d).
Herein, while the Bergsma Example 6 composition comprise toluene as the solvent, as mentioned in the previous Office action that Bergsma teaches that the reaction solvent also can be alkanes such as heptanes, hexanes; thus, one ordinary skill has a motivation to replace toluene with alkanes such as heptanes, hexanes to arrive at the composition of claim 1. With regarding the claimed 1H NMR signal ratios, as mentioned in the previous Office action that the Bergsma Example 6 product alkylaluminoxane is the same alkylaluminoxane formed in Example 2a of the instant specification, the same product would have the same NMR data1 when conducted in the same solvent.
Furthermore, as detail discussed in the 102 rejection below that Harlan teaches a paste composition meeting each and every limitation of claim 1, therefore, the composition of claim 1 cannot make over the prior art Bergsma and/or Harlan, thus the Groups lack unity of invention. Therefore, the Restriction/Election Requirement mailed on 11/26/2025 is proper and is made as Final.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Claims 1-3 are rejected under 35 U.S.C. 112(b) as indefinite because the independent claim 1 recites 1H-NMR signal of the product without specify which solvent is used when the 1H-NMR spectrum is recorded. Prior art Buckingham teaches that the NMR spectrum of a molecule is affected by the surrounding molecules. See A. D. Buckingham, et al. 32(4), The Journal of Chemical Physics, 1227-1233 (1960)(“Buckingham”) at page 1227, left col., line 1-3.
Claims 1-3 are rejected under 35 U.S.C. 112(b) as indefinite because the independent claim 1 recites the follows limitation.
“wherein the molar ratio of aluminum to non-hydrolytic oxygen in the composition is greater than or equal to 1.5”.
Given the claim(s) limits the claimed composition comprises “a reaction product of at least one non-hydrolytic oxygen-containing compound and at least one hydrocarbyl aluminum”, and further limits ““wherein the molar ratio of aluminum to non-hydrolytic oxygen in the composition is greater than or equal to 1.5”, it is not clear whether the claimed composition also requires at least one non-hydrolytic oxygen-containing compound and at least one hydrocarbyl aluminum with a molar ratio of not less than 1.5 OR the claimed ratio is the molar ratio of at the least one non-hydrolytic oxygen-containing compound and the at least one hydrocarbyl aluminum before the product is formed?
Claims 1-2 are further rejected under 35 U.S.C. 112(b) as indefinite because the claim term “non-hydrolytic oxygen-containing compound” cited in claim 1 is not clear. The specification does not provide definition for the claimed term, the specification has open side discussion as follows:
[0043] In at least one embodiment, the at least one non-hydrolytic oxygen-containing compound may comprise a compound represented by the Formula (I):
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. . . .
In at least one embodiment, the at least one non-hydrolytic oxygen-containing compound
comprises benzoic acid.
[0044] In at least one embodiment, the at least one non-hydrolytic oxygen-containing compound may comprise a compound represented by the Formula (II):
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. . . .
Specification at page 9-10, [0043]-[0044].
The plain meaning of “non-hydrolytic oxygen-containing compound” is a compound comprising oxygen and the compound cannot react with water, herein, the compound represented by the Formula (II) can be hydrolyzed by water to form a
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at some condition, therefore, one ordinary skill does not know the scope of the claimed “non-hydrolytic oxygen-containing compound”. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
A compound that that does not react with water, at least under some conditions of heat and pressure is difficult to conceive. Applicant does not disclose any conditions of temperature or pressure under which the claimed non-hydrolytic oxygen containing compound should be inert.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and the elected species are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by C. J. Harlan, et al. US20190127499 A1 (published on 05/02/2019)(“Harlan”).
Harlan teaches methods for preparing a catalyst system comprising:
contacting in an aliphatic solvent at least one support material, at least one hydrocarbyl aluminum compound and at least one non-hydrolytic active oxygen-containing compound to form a supported alumoxane (catalyst precursor) and contacting the supported alumoxane with at least one catalyst compound having a Group 3 through Group 12 metal atom or lanthanide metal atom.
Harlan at Abstract, emphasis added.
Harlan teaches working Examples such as Example 4 as follows:
Example 4
[0192] AlMe3 was added to 25 ml of dried, degassed n-pentane. This was cooled to −20° C. prior to addition of the methacrylic acid. The methacrylic acid (degassed) was added in 5 aliquots over about 30 seconds. There was a rapid, vigorous reaction. After stirring for about 10 minutes the pentane was dried down and then 3.0 ml of pentane was added. was stirred with a spatula for several minutes. The silica (ES70-875) was added to this in a semi-incipient wetness technique and this resulting paste was stirred with a spatula for several minutes. The pentane was then removed under vacuum. (Example-4B) Yield=3.18 g. 1.53 g of the resulting dry, free flowing powder was heated in a sealed tube for 16 h at 120° C., to give a colorless free flowing powder (Example-4C).
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Harlan at page 21, [0192], Example 4 and Table 4, emphasis added.
Thus, Per Example 4, Harlan teaches a paste composition comprising:
(i). a reaction product of methacrylic acid (6.95 mmol, 0.599 g) and trimethylaluminum (20.86 mmol, 1.504 g), wherein, the molar ratio of trimethylaluminum to methacrylic acid in the composition is 3;
(ii). heptane (3 ml, 3 ml × 0.684 g/ml =2.052 g); and
(iii).silica (1.6 g).
While Harlan does not teaches the claimed NMR spectrum proprieties of the reaction product, it should be noted that the Harlan Example 4 method is necessarily the same method as that of the Examples 2a and 6a in the specification because they used the same reactants and same solvent. Specification at page 55, [0149] for Example 2a and page 56, [0153] for Example 6a. Therefore, the Harlan Example 4 product alkylaluminoxane is the same alkylaluminoxane formed in Example 2a and Example 6a of the specification; thus, the Harlan Example 4 product alkylaluminoxane has the same NMR properties in recited in claim 12. The Harlan paste composition in Example 4 meets each and every limitation of claim 1, therefore, claim 1 and the elected species are anticipated.
Claim 3 is anticipated because methacrylic acid has a structure as indicated below:
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Which maps the Formula (I) in claim 3 as:
each of R1 and R2 is hydrogen,
R3 is methyl; and
R4 is OH.
Regarding claim 2, the concentration of pentane in the Harlan paste composition is 35.6% by weight [2.052/(2.052+1.60+0.599+1.504)=35.6%], Harlan further teaches to remove of the pentane from paste composition (wherein the concentration of pentane is 0%). Therefore, a new composition comprising the reaction product, silica and 1%-20% pentane by weight is formed at some time point during removing pentane from the paste composition, which meets each and every limitation of claim 2, and claim 2 is anticipated.
Claim Rejections - 35 USC § 103
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over J. M. Bergsma, et al, WO2016170017A1 (2016)(“Bergsma”) in view of C. J. Harlan, et al. US20190127499A1 (published on 05/02/2019)(“Harlan”).
J. M. Bergsma, et al, WO2016170017A1 (2016)(“Bergsma”)
Bergsma teaches that:
Aluminoxanes are known in the industry, mainly by their application as a catalyst component in polymerization catalysts, especially as a co-catalyst in metallocene catalysts that are used in polymerizing or oligomerizing olefins
Bergsma at page 1, line 5-8.
Bergsma teaches a process to prepare alkylaluminoxanes by reaction of alkylaluminium with methacrylic acid or a conjugated unsaturated carbonyl functional compound of the formula (I), the process with high yield and high conversion and the process can be performed in higher concentration, i.e. it can be performed in lower amounts of solvent. Bergsma at page 2, line 21 to page 3, line 5, emphasis added.
Regarding the solvent of the process, Bergsma teaches that:
The inert organic solvent in which the process of the present invention is performed can be any organic hydrocarbon solvent that the skilled person knows is not reactive with an alkylaluminium compound. Examples thereof are alkanes, such as heptanes, hexanes, or aromates, such as toluene, xylene, ethylbenzene, cumene, mesitylene.
Bergsma at page 10, line 10-14, emphasis added.
Bergsma teaches working examples, such as Example 6 as follows:
A 30 ml glass vial equipped with a magnetic stirring bar was charged with 8.5 g toluene and 2.70 g (37.5 mmol) trimethylaluminium (ex AkzoNobel). To this solution, 0.65 g (7.5 mmol) of 2-methylpropenoic acid (ex Sigma-Aldrich) was slowly added, resulting in an exothermic reaction with gas formation.
1H-NMR analysis of the reaction product after dosing showed multiple peaks in the Al-Me region, which is indicative of the presence of intermediate products. The reaction mixture was left to stir at room temperature for 20 hours.
The mixture was then heated to 105°C (oil bath) for 1 hour.
1H-NMR analysis showed that the intermediate peaks disappeared and showed the formation of a broad signal next to the TMAL peak, confirming methylaluminoxane formation.
Bergsma at page 14, Example 6 [2-methylpropenoic acid (methacrylic acid) as reactant], line 4-14, emphasis added.
Thus, Bergsma teaches a composition comprising:
(i). a reaction product of at least one 2-methylpropenoic acid also known as methacrylic acid and trimethylaluminium; both of which are elected species; wherein, the molar ration of trimethylaluminium to 2-methylpropenoic acid is 5 (37.5/5=5), and
(ii). toluene
Regarding the claimed NMR properties of the product, the Bergsma Example 6 method is necessarily the same method as that of the Examples 2a and 6a in the specification except different solvent (toluene vs pentane) is used. Specification at page 55, [0149] for Example 2a and page 56, [0153] for Example 6a. Therefore, the Bergsma Example 6 product alkylaluminoxane is the same alkylaluminoxane formed in Example 2a/6a of the specification; thus, the Bergsma Example 6 product alkylaluminoxane has the same NMR properties in recited in claim 12.
Bergsma teaches that the alkylaluminoxanes obtainable by his process can be as a component in catalysts used for olefin polymerization or oligomerization processes. Bergsma at page 3, line 11-16.
Difference between Bergsma and Claims 1-3
The Bergsma Example 6 composition differs from the instant claim 1 only in that toluene is not an aliphatic hydrocarbon fluid.
C. J. Harlan, et al. US20190127499A1 (published on 05/02/2019)(“Harlan”).
As mentioned in the 102 rejection above that Harlan teaches methods for preparing a catalyst system comprising:
contacting in an aliphatic solvent at least one support material, at least one hydrocarbyl aluminum compound and at least one non-hydrolytic active oxygen-containing compound to form a supported alumoxane (catalyst precursor) and contacting the supported alumoxane with at least one catalyst compound having a Group 3 through Group 12 metal atom or lanthanide metal atom.
Harlan at Abstract, emphasis added.
Harlan teaches that:
[0014] Use of an aliphatic solvent instead of toluene provides a catalyst system (and polyolefin products) with no detectable amount of aromatic hydrocarbon solvent content while maintaining activity similar to that of catalyst systems prepared with pre-formed MAO and or using toluene. Maintaining activity would not be expected since catalyst system components such as methylalumoxane precipitate in the presence of saturated hydrocarbon.
[0015] Eliminating aromatic hydrocarbon solvent in the catalyst system provides polyolefin products having no detectable aromatic hydrocarbon solvent (preferably no detectable toluene), as determined by gas phase chromotography as described in the Test Methods section below. The polyolefin products may be used as plastic materials for use in toluene-free materials such as in packaging for food products. Furthermore, many saturated hydrocarbons have lower boiling points than aromatic hydrocarbons, such as toluene (110° C.), which makes the saturated hydrocarbons easier to remove from the polyolefin products.
Harlan at page 2, [0014]-[0015], emphasis added.
Obviousness Rationales of Claims 1-3 and the elected Species
Claim 1 is obvious because one ordinary skilled artisan seeking alkylaluminoxane as a component in catalysts used for the production of toluene-free polyolefin materials such as in packaging for food products is motivated to modify the Bergsma Example 6 by replacing toluene with alkane such as heptane; thus arrive at the claimed composition in claim 1, therefore, claim 1 is obvious.
One ordinary skill has a motivation to do so with a reasonable expectation of success because:
(i). Bergsma teaches that heptane or hexane is an alternative of toluene as solvent of his process;
(ii). Harlan teaches that replacing of toluene with an aliphatic solvent in a reaction of at least one hydrocarbyl aluminum compound and at least one non-hydrolytic active oxygen-containing compound can provide a product with no detectable amount of aromatic hydrocarbon solvent content while maintaining activity similar to that of catalyst systems prepared with using toluene.
Rationales supporting the motivation is simple substitution of one known element for another to obtain predictable results. MPEP214.I (B).
Claim 2 is obvious because one ordinary skill is also motivated to modify the proposed method by optimization of the amount of the solvent into the claimed ranges as Bergsma teaches that the process can be performed in higher concentration, i.e. it can be performed in lower amounts of solvent. Bergsma at page 2, line 21 to page 3, line 5. [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 except the claimed ranges are critical. MPEP 2144.05 II. Herein, neither the instant application nor prior art provide evidence to show the claimed solvent amount is critical to the claimed method.
Claim 3 is obvious because 2-methylpropenoic acid has a structure as indicated below:
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Which maps the Formula (I) in claim 3 as:
each of R1 and R2 is hydrogen,
R3 is methyl; and
R4 is OH.
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).
Provisional Rejection over US20240018278A1 (2024)
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4 of co-pending Application No. 18/253,835 (US20240018278A1) in the claim set filed on 05/22/2023. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1, the conflicting claim 1 claims a process to prepare a supported alumoxane, comprising:
(a) forming a solution by, in an aliphatic hydrocarbon fluid, combining at least one hydrocarbyl aluminum with at least one non-hydrolytic oxygen-containing compound and a support material, wherein the molar ratio of aluminum to non-hydrolytic oxygen in the solution is greater than or equal to 1.5, wherein the aliphatic hydrocarbon fluid has a boiling point of less than about 70 degrees Celsius, and wherein the combining is conducted at a temperature of less than about 70 degrees Celsius;
(b) distilling the solution at a pressure of greater than about 0.5 atm to form a supported alumoxane precursor, wherein the precursor comprises from about 0 wt% to about 50 wt% of the aliphatic hydrocarbon fluid based on the total weight of the precursor; and
(c) heating the precursor to a temperature greater than the boiling point of the aliphatic hydrocarbon fluid and less than about 160 degrees Celsius to form a supported alumoxane.
The composition formed in step (a) of the conflicting claim 1 meets each and every limitation of the instant claim 1 because a reaction product would formed once combination of at least one hydrocarbyl aluminum with at least one non-hydrolytic oxygen-containing compound in a solution; therefore, the instant claim 1 is anticipated. With regarding the claimed NMR properties of the product, the same product would have the same NMR spectrum. Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (holding that a prior art structure anticipated a claimed structure even though a claimed functional recitation was not specifically taught in the prior art reference because applicant had failed to show that the prior art did not possess the functional characteristics of the claims)).
Regarding claim 2, the conflicting claim 2 further claims that:
The process of claim 1, wherein the precursor comprises from about 1 wt% to about 20 wt% of aliphatic hydrocarbon fluid based on the total weight of the concentrate.
The composition formed in step (a) of the conflicting claim 2 meets each and every limitation of the instant claim 2, therefore, the instant claim 2 is anticipated.
Claim 3 also is anticipated because the conflicting claim 4 has exactly the same limitation of the non-hydrolytic oxygen-containing compound in the conflicting claim 1 as that of the instant claim 3.
Terminal Disclaimer
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANK S. HOU whose telephone number is (571)272-1802. The examiner can normally be reached 6:30 am-2:30 pm Eastern on Monday to Friday.
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, Scarlett Goon can be reached at (571)2705241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
1 Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (holding that a prior art structure anticipated a claimed structure even though a claimed functional recitation was not specifically taught in the prior art reference because applicant had failed to show that the prior art did not possess the functional characteristics of the claims)).
2 Where the claimed and prior art products are identical or substantially identical in composition to a claimed composition, a prima facie case of either anticipation or obviousness has been established subject to Applicant’s rebuttal. MPEP § 2112.01(I) (citing In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (holding that a prior art structure anticipated a claimed structure even though a claimed functional recitation was not specifically taught in the prior art reference because applicant had failed to show that the prior art did not possess the functional characteristics of the claims)).