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
Claims 1-8 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.
In claim 1, the metes and bounds of the “material comprising a molecular weight greater than 35k Da” are indeterminate in scope. As presently recited, said material reads on and does not distinguish over either the “styrenic block copolymer” or “polypropylene”.
In claim 1, it is unclear what type of molecular weight is being defined.
In claim 1, it is unclear whether the recited percentages are based on total membrane or based on 100% of the total sum of the four recited ingredients. Moreover, are the 40% and 0-10% contents also “by weight”?
In claim 2, it is unclear what is meant by “liner” structures.
In claims 3-7, the conditions under which the recited properties are to be determined is not apparent.
In claim 8, there is no express antecedent basis for the material having an outer surface.
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 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0053285 (Zhao).
Zhao discloses a composition for producing articles that can reseal themselves such as seals, septa, plugs (meets Applicants’ self-healing membrane) comprising:
100 phr of a hydrogenated styrenic block copolymer (SBC) having a number average molecular weight of greater than about 200,000 Da (meets Applicants’ styrenic block polymer having a molecular weight greater than 35k Da);
about 5 to 50 pph of a polypropylene (meets Applicants’ polypropylene);
about 20 to 400 pph of a mineral oil (meets Applicants’ mineral oil); and
about 10 to 120 pph of a filler (e.g., abstract, [0011-0022], examples, claims).
In the examples, Zhao sets forth various test plaque articles (Tables 2 and 3) comprising, inter alia, a SEBS block copolymer (KRATON), a polypropylene (Purell) and a mineral oil (Primol). Illustratively, exemplified composition F comprises, based on total composition, about 29% (100/341.08) SEBS block copolymer, about 8% polypropylene (27/341.08 and about 47% (160/341.08) mineral oil.
In essence, Zhao differs from claim 1 in that none of the exemplified articles meet the presently claimed styrenic block and mineral oil contents. It is within the purview of Zhao’s inventive disclosure, however, to use the polypropylene in an amount of about 5 to 50 pph for its expected additive effect [0016] and the mineral oil in an amount of about 20 to 400 pph for its expected additive effect [0019-0021]. Thus, it would have been obvious to formulate a composition wherein the polypropylene and mineral oil contents fall within the presently claimed ranges in accordance with the ultimate properties desired. In this regard, an exemplary composition comprising 100 phr SEBS block copolymer (KRATON), about 5 phr polypropylene (Purell), about 130 phr mineral oil (Primol) and about 10 phr filler would fulfill the presently claimed compositional weight requirements. Differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where 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”, In re Aller, 105 USPQ 233.
As to claim 2, Zhao’s compositions includes at least linear structures [0003].
As to claim 3, Zhao discloses that the compositions preferably have a Shore A hardness less than 50 [0014]. Thus, it would have been within the purview of one having ordinary skill in the art to formulate a composition governed by the presently claimed Shore A hardness in accordance with the ultimate properties desired and with the reasonable expectation of success.
As to claim 4, Zhao exemplifies compositions having tensile strengths greater than 3 Mpa, e.g., 1370 psi = about 9 MPa.
As to claim 5, Zhao discloses the compositions are governed by high tensile strength [0036]. Thus, it would have been within the purview of one having ordinary skill in the art to formulate compositions governed by a tear resistance as presently claimed in accordance with the ultimate properties desired and with the reasonable expectation of success.
As to claims 6 and 7, it would be expected that Zhao’s similarly-constituted compositions would be governed by similar properties.
As to claim 8, Zhao’s materials are free from silicon oils.
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 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/291974 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are directed to a similarly-constituted membrane comprising the same components and contents thereof.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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