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 .
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.
Claims 1-20 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.
Independent 1 is indefinite in regards to what is meant by a “dispersible binder”, and how does it “differ” if any, from a binder that is not called “a dispersible binder”?
Independent 1 is also clearly indefinite in regards to the distinction between “a dispersible binder” and “a natural material” in light of applicant’s disclosure on page 2, lines 9-11 of the specification: “The substrate is made of natural particles and a dispersible binder material, such as flour-like materials, mixed with different granular grade materials, such as wood, e.g. sawdust.”. In addition, all of applicant’s examples use “flour” as the dispersible binder and “wood” (seems to be sawdust) as the natural material, yet “flour” is itself a natural material, and as such, it reads directly on the “a natural material” component in independent claim 1.
Furthermore, the term “flour” is itself indefinite because applicant has not set forth any definition of the metes and bounds of what is meant by “flour”. It is well known in the art that the word “flour” encompasses vastly different chemical substances, such as grain flours (e.g. wheat flour, rice flour etc. ), bean flour, shell flour (e.g. coconut shell flour) and cellulose flour (i.e. powdered cellulose, sawdust or wood dust).
Dependent claim 5 is indefinite in regards to its sub-limitation of: “in particular between 0.5 to 1.5 %” since is causes confusion about the actually claimed concentration range.
Dependent claims 8, 18 and 19 are indefinite in their own right in regards to the limitation of: “wherein the granulometry of the natural material is between 0 and 250 um.”, because a natural material is a required component according to independent claim 1, and if its granulometry is set to zero (0) um, the natural material would NOT exist.
All other claims are also being rejected here because they are either directly or indirectly dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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 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.
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(s) 1-5, 8, 11-12, 14-15 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D’Orazio U.S. Patent Number 4,144,318.
D’Orazio discloses an improved mosquito coil composition comprising from 72-83% by weight based on dry ingredients of a carrier selected from sawdust having a particle size between 70 and 200 mesh (i.e. 210 um to 74 um), coconut shell flour, pyrethrum marc, and mixtures thereof, from 16-26% by weight based on dry ingredients potato starch and 0.5-3% by weight based on dry ingredients of an insecticide. The process comprises dispersing the starch in water heated to a temperature of from 40o to 65o C., adding water having a temperature of between 80o to 95o C. to the dispersed water-starch mixture, mixing the starch-water gel with the filler and insecticide, extruding the mixture into a ribbon, forming the mosquito coils from this ribbon, and drying the formed mosquito coils, see abstract.
Please note that: 1) D’Orazio’s sawdust component reads directly on applicant’s “a natural material”, 2) D’Orazio’s potato starch component reads directly on applicant’s “a dispersible binder” component and 3) D’Orazio’s insecticide component reads directly on applicant’s “preservative” of dependent claims 4 and 14, in that it protects the composition from being attacked by insects.
Applicant’s claims are deemed to be directly anticipated over D’Orazio’s Examples 1-3. As way of illustration only, Example 1 teaches a process of making composition comprising (on a dry basis) about 25 weight % potato starch, about 75 weight % of 80 mesh (i.e. 177 microns) sawdust and about 1 weight % emulsifiable allethrin insecticide.
Claim(s) 6 and 16-17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over D’Orazio U.S. Patent Number 4,144,318.
D’Orazio has been described above and D’Orazio’s Examples 1-3 are deemed to anticipated applicant’s claims. In the alternative, D’Orazio can be said to differ from applicant’s claimed invention in that D’Orazio does not expressively disclose the granulometry (particle size range) of his potato starch component which seems to sourced from common commercially sold potato starch. The Examiner performed an internet search on common commercially sold potato starch powder which revealed that the common particle size range of said potato starch powder falls within 5 to 120 microns. Thus using said information, one having ordinary skill in the art would have amply motivation to actually employ potato starch powder that has a granulometry (particle size range) that overlaps applicant’s claimed concentration ranges. It is noted that applicant has no showing of any superior and unexpected results for applicant’s specifically claimed granulometry (particle size range) for their dispersible binder component.
Claim(s) 10, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over D’Orazio U.S. Patent Number 4,144,318.
D’Orazio has been disclosed above and differ from applicant’s claimed invention in that there is not a direct teaching (i.e. by way of an example) to: 1) where the dispersible binder is selected to be flour and 2) where sodium benzoate is further incorporated into the mosquito coil composition.
It would have been obvious to one having ordinary skill in the art to use D’Orazio’s disclosure of the abstract and column 2, lines 60-62, that coconut shell flour can be used in the mosquito coil composition, as strong motivation to actually incorporated coconut shell flour into the mosquito coil composition, thus meeting the limitation of applicant’s dependent claim 10. It is well known in the art that it is not inventive to merely follow the direct suggestion of a prior-art reference.
It also would have been obvious to one having ordinary skill in the art to use D’Orazio’s disclosure of column 3, lines 9-28 wherein sodium benzoate is directly disclosed as an optional component which can be incorporated in an amount of 0.3- 0.75% by weight (falls directly within applicant’s claim 5 limitation) as strong motivation to actually incorporate sodium benzoate into D’Orazio’s mosquito coil composition. It is well known in the art that it is not inventive to merely follow the direct suggestion of a prior-art reference.
Claim(s) 1-5, 11-12 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. U.S. Patent Application Publication No.: 2013/0213309 A1.
Wang et al. discloses an animal litter in the form of pellets or granules comprising starch or flour as cohesiveness agent, i.e. a binder, in amounts of 5 to 40 wt% (para.[0022]-[0025]), a range of natural products such as malt sprouts, in amounts of 20 to 85 wt%, such as 65 wt% (para. [0017], [0018]), or plant meal and/or grain meal and/or fibre, in amounts of 1 to 90 wt% (para. [0026]-[0030]), or wood such as pine sawdust (example 7). It may contain microbial inhibitors in amounts of 0.1 to 2 wt%. The microbial inhibitor may be sodium benzoate (para. [0031]-[0033]). The animal litter may contain a fragrance or deodorant (para. [0035]-[0037]) and is thus suitable as a substrate for volatile substances. Applicant’s claims are deemed to be anticipated over Example 7 which comprises in part: 33.00 wt% pine sawdust, 30.00 wt% of fine ground malt sprouts, 29.90 wt.% corn starch and various preservatives.
Claim(s) 10, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. U.S. Patent Application Publication No.: 2013/0213309 A1.
Wang et al. has been described above and differs from applicant’s claimed invention in that there is not a direct teaching (i.e. by way of a specific example) to where: 1) flour is used as the cohesiveness agent (binder) and 2) to where sodium benzoate is used as a preservative agent.
It would have been obvious to one having ordinary skill in the art to use Wang et al.’s disclosure that flour can be used as the cohesiveness agent (binder) material, see paragraphs [0023]-[0024] and [0026]-[0027], as strong motivation to actually employ flour, in lieu of starch, as the cohesiveness agent (binder) material in the animal litter composition. It is well known in the art that it is not inventive to merely follow the direct suggestion of a prior-art reference.
Likewise, it would have been obvious to one having ordinary skill in the art to use Wang et al.’s disclosure in paragraph [0032] that sodium benzoate can be used as a preservative, as strong motivate to actually use sodium benzoate in the animal litter composition. It is well known in the art that it is not inventive to merely follow the direct suggestion of a prior-art reference.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of copending Application No. 18/270,003 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application’s required “a biodegradable material” component massively overlaps in scope the pending claims required “a natural material” component. As way of illustration only, the most preferred “a biodegradable material” component according to copending application is “wood sawdust” (see dependent claim 12), and the most preferred “a natural material” component according to the pending application is also “wood sawdust” (see dependent claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764