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 2-7, 10, 12, 14, 16 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.
Claim 10 lacks antecedent and should depend from clam 8, with slight modification thereto (identifying step c).
Claim 2i has inconsistency in the ranges; 30% polymer contradicts the solvent limitation.
Claim 12 line 5 recites ‘pore width’ but then has units of pore volume. It is unclear which is being required. It is taken as pore volume because of the units used.
Claim 14 recites pore volume, but the units are for area per gram. It is unclear what is being required- pore volume or surface area.
Claim 16 is inconsistent; it recites pore volume, not pore width. It is unclear which is being required.
Claims 12, 14 and 16 cannot be properly evaluated until correction is made. Claims 3-7 ultimately depend from clam 2.
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.
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.
Claim 1-6, 8-11, 13, 15, 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Von Blucher et al. 20030092560 taken with Inagaki et al. 6274681 and in view of the admissions by applicant in the specification.
Regarding claims 1 and 13, Von blucher teaches, especially in paras 15-22, 34 and the examples, sulfonating styrene containing materials and heating to carbonize and activate.
Blucher para 21 (within the paragraph range cited above) teaches ‘water vapor in nitrogen’ at 850-950 degrees. This makes steam, and claim 11 of Blucher explicitly recognizes this fact.
While not reciting expanded PS, using it is obvious since it is a commonly available waste material (‘STYROFOAM’), thereby reducing waste in landfills and making it into a valuable product. The background in specification paragraph 1 discusses this issue at length, and is considered to be an admission of the state of the art.
Blucher does not teach a solvent or other details of the sulfonation, however Inagaki teaches, especially in cols. 3-7 and the examples, sulfonating PS using a solvent and sulfuric acid.
Using the technique of Inagaki in the process of Blucher is obvious to perform the sulfonation desired by Blucher.
For claims 2 and 18, Inagaki col. 3 and 33-34 (for example) teach overlapping solvent amount of step (i). Anhydrous sulfuric acid and fuming are taught, rendering obvious the concentration of step (ii). Step (iii) is obvious to assure efficient mixing of reactants and control of the temperature. ‘681 teaches quench in col. 6. See also the quenching effect of water in col. 1. Step (v) is obvious to assure complete quenching and termination of the reaction (Inagaki ex 16).
For claim 3, see Inagaki col. 6 line 40. The exact times are obvious to achieve complete reaction.
For claim 4 and 20, see Inagaki col 5-6 bridging paragraph.
For claim 5 and 21, see Inagaki col. 14 and 33. Drying is obvious to ascertain the actual yield, and a furnace is obvious to drive off the water. The type of furnace is obvious to provide the necessary heat.
For claim 6 and 22, the time of drying is obvious to assure complete dryness.
For claim 8, a tube furnace is taught, see ‘560 ex. 3. Cooling to room temperature is obvious for safe recovery and avoiding post-oxidation.
For claims 9 and 24, see ‘560 para 16, noting that times and temperatures can be optimized for best results.
For claim 10 and 25, see ‘560 para 69.
For claims 11 and 17, acetone is taught; see ‘681 col. 4.
For claim 15, activation using steam in nitrogen is taught; ‘560 para 60 and 69.
For claim 19, Inagaki col. 9 lines 45-50; the overlapping ranges render the claimed choices obvious.
For claim 23, see ‘560 para 69.
Claim 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Von Blucher et al. 20030092560 taken with Inagaki et al. 6274681 and the admissions above, and further in view of Smyth et al. 8835352 and Von Blucher et al. 20080107589, respectively.
For claim 7, a bath is taught; Smyth col. 14. Using silicone is obvious to provide the desired bath.
For claim 16, ‘589 teaches in Table 1 BET area, micropore volume and micropore percent (from which total volume can be calculated) for materials made by a similar process. No differences are seen (especially in light of the issues under ‘112), and optimization of pore characteristics is obvious to achieve the desired properties; see ‘560 paras 27 and 57-62.
Allowable subject matter
Claims 12 and 14 recite a specific pore size (3.5-8.5A) not taught in the prior art. This limitation is considered to make them allowable, although these claims suffer from the ‘112 issues above.
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 1-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/474273 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim common or overlapping range subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736