Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objection
2. Objection is made to claim 3, because the presence of the second “is” within line 1 causes the claim to read improperly.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 1-12 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.
Firstly, with respect to claims 1 and 5, the basis for the claimed weight percent ranges have not been set forth; it is unclear if the weight percent ranges are based on the weight of the catalyst or some other entity. This issue is especially unclear with respect to process step (a) of claim 5.
Secondly, with respect to claim 8, applicants have claimed a single-step process; however, the process recites multiple steps within (a), (b), and (c). Clarification is required as to how this constitutes a single-step process.
Thirdly, with respect to claim 8, it is unclear how to interpret the language, “4.7% to 98.1% polyether polyols”.
Fourthly, with respect to claims 9-12, “the single-step process” lacks antecedence from claim 7.
Fifthly, with respect to claim 12, the relative language, “with less PDI”, cannot be understood, since there is basis to which it is relevant. Also, regarding the claimed viscosity range, since viscosities are highly temperature dependent, the claiming of viscosities in the absence of a temperature condition renders the viscosity range virtually meaningless.
Double Patenting Rejection
5. 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.
6. Claims 1, 2, and 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4-8 of U.S. Patent No. 11,898,007 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim set and patented claim set are drawn to double metal cyanide catalysts comprising double metal cyanide complex and organic complexing agent, wherein the respective amounts of each component significantly overlap. Furthermore, the instant claimed process of producing a polypropylene ether polyol using the catalyst of claim 1 would have been obvious in view of the patented process utilizing the overlapping/equivalent components, steps, and conditions.
Prior Art Rejection
7. 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.
8. Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Le-Khac (US 5,482,908) or Ooms et al. (US 6,391,820 B1) or Ahn et al. (US 8,680,002 B2).
Each reference discloses a double metal cyanide catalyst comprising a double metal cyanide complex, such as zinc hexacyanocolbaltate (claim 2), and organic complexing agent (ligand). The disclosed percentage amounts for the respective complexing agents (ligands) meet or very substantially overlap the claimed amounts of claim 1, such that teachings of the references are anticipatory. See abstract; column 4, lines 40- 44; column 6, lines 40 and 41; column 8, lines 17-17 and 35-37; and Table 1 within Le Khac (Considering the disclosed contents of the two complexing agents, the remaining amount constitutes the catalyst complex.). See column 3, lines 9+ within Ooms et al. See column 2, lines 59-67; and column 3, lines 41-54 within Ahn et al.
Allowable Subject Matter
9. Claims 3-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and objection to claim 3 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The prior art fails to disclose the Schiff base complexing agents of claims 3 and 4, and fails to disclose all of the process limitations of claim 5.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765