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 .
Status of Application
Claims 1-16 are pending and presented for examination.
Claims for Examination
Note the amended claim set of 7/14/2023 is the claim set of record and is the claim set examined below. Another claim set was filed on 3/15/2024 but was not entered as it was an old claim set and didn’t incorporate the changes from the amended claim set of 7/14/2023.
Specification
The abstract of the disclosure is objected to because of the use of the word “said”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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.
1. Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-9, 14 and 15 of copending Application No. 18/571334 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 6-9, 14 and 15 anticipate claims 1-3, 5-10, 12-14 and 16. Additionally, claims 4, 11 and 15 are obvious as the claims of copending Application No. 18/571334 teach a range that overlaps with the range of claims 4, 11 and 15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2. Claims 1-3 and 7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 9 of copending Application No. 18/871952 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2 and 9 recite an identical process and composition except for failing to teach the exact range for the fatty acid metal salt. However, claims 2 and 9 recite a range that overlaps with the claimed range and thus makes the claims obvious (overlapping ranges are prima facie evidence of obviousness).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
3. Claim(s) 1-3, 6-10, 13 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (EP 3190154).
Initially, it is noted that the limitation in the preamble that the composition “is used by being melt kneaded with metal powders” is an intended use recitation and holds no patentable weight. When reading the preamble in the context of the entire claim, this recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
I. Regarding claims 1-3 and 7, Park teaches a composition comprising 100 parts polyacetal resin and 0.4 parts magnesium stearate (Example 11, Table 1). Park also teaches preparing the composition by melt-kneading the polyacetal resin and the magnesium stearate (see Table 1 and 0080). Park teaches all the limitations of claims 1-3 and 7; therefore, Park anticipates the claims.
II. Regarding claims 6, 9 and 10, Park teaches that the above polyacetal composition can be mixed with metal powder to yield a metal resin composition. Park teaches all the limitations of claims 6, 9 and 10; therefore, Park anticipates the claim.
III. Regarding claims 8, 13 and 14, Park teaches that the above polyacetal composition can be melt kneaded with metal powder and injection molded to yield a powder injected molded part (0072-0076). Park teaches all the limitations of claims 8, 13 and 14; therefore, Park anticipates the claims.
4. Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ito et al. (U.S. PGPUB No. 2015/0225536).
Initially, it is noted that the limitation in the preamble that the composition “is used by being melt kneaded with metal powders” is an intended use recitation and holds no patentable weight. When reading the preamble in the context of the entire claim, this recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Regarding claims 1-4, Ito teaches a composition comprising 100 parts polyacetal resin and 1 part zinc stearate (Example 5, Table 1). Ito teaches all the limitations of claims 1-4; therefore, Ito anticipates the claims.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
5. Claim(s) 4, 5, 11, 12, 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park.
Regarding claims 4, 5, 11, 12, 15 and 16, Park teaches all the limitations of claim 1, 4, 5, 11, 12, 15 and 16 (see above) except for teaching an exemplary embodiment where the fatty acid metal salt is present in 1-10 parts and the melt flow of the polyacetal is 40-100 g/10 minutes. However, Park does teach that the fatty acid metal salt may be present in a range of 0.5-10 parts by weight with respect to 100 parts of polyacetal resin (0046) and the melt flow index of the polyacetal can be 0.1-100 g/10 min (0034). Park teaches ranges for the amount of fatty acid metal salt and melt flow index which overlap the claimed ranges. Furthermore, overlapping ranges are prima facie evidence of obviousness.
Conclusion
Claims 1-16 are pending
Claims 1-16 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S WALTERS JR/
July 11, 2026Primary Examiner, Art Unit 1717
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