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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-7 of copending Application No. 18/290,886 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1, the claim is identical to claim 1 of the reference application, with the following exceptions:
the amine-based component is referred to as an “age resistor” (versus an “antioxidant” in the copending application);
the quinoline-based component is referred to as an “age resistor” (versus an “antioxidant” in the copending application);
the compositional amounts of the amine-based and quinoline-based components are limited by a ratio thereof (versus specific mass amounts per 100 parts of rubber in the copending application)
The first two differences are tantamount to intended uses thereof within the compositions, and therefore do not positively limit the compositions (see MPEP 2111.02.II.). Regarding the third difference, claim 1 of the copending application requires that the amine-based and quinoline-based components are included in amounts ranging from 0.1 to 11 and 1.75 to 2.5 phr, respectively, which is equivalent to a ratio of 0.159- 25. This ratio range overlaps the claimed range of “0.05 to 0.2,” establishing a prima facie case of obviousness.
Regarding claim 2, claim 2 of the copending application requires the same listing of rubber components.
Regarding claims 3 and 8, claim 1 of the copending application requires the same compositional amount of the amine-based component, as described above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 4, 9, and 12, claim 4 of the copending application requires the same substituents for “R1” and “R2.”
Regarding claims 5, 10, 13, and 15, claim 5 of the copending application also requires the incorporation of a wax in amounts ranging from 0.1 to 5 phr.
Regarding claims 6, 11, 14, 16, and 17, claim 7 of the copending application requires 2,2,4-trimethyl-1,2-dihydroquinone as the quinoline-based component.
Regarding claim 7, claim 6 of the copending application requires a tire formed from the purportedly-inventive composition.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Unterberg (EP 2604651 A1, hereinafter referring to the attached ESPACENET translation).
Regarding claims 1-17, Unterberg teaches a novel rubber formulation ([0001]), comprising a rubber ([0024]) and an antioxidant such as N,N’-bis-1,4,-(1,4-dimethylpentyl)-p-phenylenediamine (77PD) ([0063]). 77PD reads on the claimed “amine-based age resistor” because it has an identical structure to the claimed “general formula (1)” wherein “R1” – “R2” are both 1,4-dimethylpentyl groups. These 1,4-dimethylpentyl groups are saturated hydrocarbon groups having 7 carbons, and they therefore also read on the substituents stipulated upon within claims 4, 9, and 12. Unterberg teaches that said antioxidant is included in amounts ranging from 0.1 to 5 phr ([0063]), and teaches the incorporation of anti-aging agents such as polymerized 2,2,4-trimethyl-1,2-dihydroquinoline (TMQ) ([0062]), in amounts ranging from 0.1 to 5 phr. Polymerized TMQ reads on the claimed “quinoline-based age resistor.” The ratio of said antioxidant and anti-aging agent therefore ranges from about 0.02 to about 50, which encompasses the claimed range of “0.05 to 0.2,” establishing a prima facie case of obviousness. The amount of amine, 0.1 to 5 phr, likewise falls within the claimed range of claims 3 and 8, establishing a prima facie case of obviousness.
This anti-aging agent (polymerized TMQ) likewise reads on the specifically claimed antioxidant within claims 6, 11, 14, 16, and 17
Unterberg teaches that the rubber within the formulation is preferably a styrene/butadiene rubber or a polyisoprene rubber ([0035]), which reads on list of rubbers within claim 2.
Unterberg further teaches the incorporation of waxes in amounts ranging from 1 to 50 phr ([0066]), which overlaps the claimed range within claims 5, 10, 13, and 15, establishing a prima facie case of obviousness.
Unterberg teaches the formation of a tire from the inventive composition ([0094]), and therefore meets the limitation of claims 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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