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 .
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 1-13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/270,177 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the pending application and copending Application No. 18/270,177 claim “A substrate for diffusing volatile substances, characterized in that the substrate comprises: - a dispersible binder; and - a biodegradable material” wherein the biodegradable material (natural material) is wood or wood material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 5 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “biodegradable preservative is between 0.1 and 5 %” and the claim also recites “in particular between 0.5 and 1.5 %” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 6-9 are 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.
Claims 6-9 use the term “granulometry” in the claims which is defined in the art as “the measurement and analysis of the size distribution of particles in a granular material, like soil, powders, or sediments, often expressed as the percentage of different size fractions (e.g., sand, silt, clay) by weight or volume.” The pending claims do not provide a size distribution of the granulometry. Further, the parameter "granulometry" in claims 6-9 is unclear, because it cannot be determined whether the stated size ranges or sizes are meant to refer to a specific portion or peak of a particle size distribution, and if so, to which of those portion or peaks that are conceivable (such as e.g. D10, D50, D90). Further, it is unclear, whether "granulometry" is meant to refer to an (equivalent) particle diameter or an (equivalent) particle radius. It follows that the subject-matter of claims 6-9 is unclear. Hence it is the position of the Office that claims 6- are indefinite.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D’Orazio (U.S. Pat. No. 4,144,318).
Regarding claim 1, D’Orazio teaches mosquito coils made comprising sawdust and starch which meets the limitation of substrate for diffusing volatile substances, characterized in that the substrate comprises: - a dispersible binder (starch) and a biodegradable material (sawdust) (column 4, lines 35-55).
Regarding claim 2, D’Orazio teaches 74% by weight sawdust which is encompassed by biodegradable material: 55-75 % (column 2; column 4, Table II). D’Orazio teaches 25% by weight starch which is encompassed by dispersible binder: 15-45 % (column 2; column 4, Table II).
Regarding claim 3, D’Orazio teaches 74% by weight sawdust which is encompassed by biodegradable material: 65-75 % (column 2; column 4, Table II). D’Orazio teaches 25% by weight starch which is encompassed by dispersible binder: 20-30 (column 2; column 4, Table II).
Regarding claims 4, 5 and 13, D’Orazio teaches 0.3-0.75% by weight sodium benzoate which is encompassed by in particular between 0.1 and 5 (column 2; column 3, lines 20-30).
Regarding claims 6-7, D’Orazio teaches the starch used must be dispersible in water at a temperature below the gellation point of the potato starch, about 66.5 ˚C (Column2, lines 25-35). D’Orazio does not teach the granulometry of the potato starch but it is the position of the Office one of ordinary skill in the art would adjust the size of the potato starch grains to dissolve in water quickly and efficiently to achieve the desire gelation point.
Regarding claims 8-9, D’Orazio teaches sawdust having a particle size from 100- 200 mesh (column 2, lines 65-68).
Regarding claim 10, D’Orazio teaches potato starch which meets a broad and reasonable interpretation of flour(column 2, lines 25-40).
Regarding claims 11 and 12, D’Orazio teaches sawdust (column 2, lines 65-68).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUINEVER S GREGORIO whose telephone number is (571)270-5827. The examiner can normally be reached M-W 11 am - 9 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at 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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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 12/16/2025