DETAILED CORRESPONDENCE
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 Interpretation
In claim 1 “preparing a starch having [properties measured by measuring steps]” is understood to positively recite preparing a starch, but does not require performing the measuring steps.
A composition X with properties Y is met by a prior art teaching a composition X. See MPEP 2112.01.
Here, a composition (starch) having properties (e.g., a particular viscosity when measured using a particular method) is met by prior art that teaches the same composition.
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues that “Curry patent is silent regarding the claimed using of a rapid visco analyzer (RVA)”
Examiner does not find this persuasive because the claim does not require using of a rapid visco analyzer. Rather, the claim requires a composition (i.e., starch) that has certain properties (i.e., viscosity as measured by a rapid visco analyzer). Curry discloses the same composition and meets the claim.
If applicant intends for the claim to require the measuring steps, then the claim should positively recite the measuring steps. As recited in the claim, the measuring steps are used to describe the starch, but they are not positively recited steps in the method – they are not required to be performed.
As the claim is currently written, a person could infringe the claim by preparing a starch that has the properties and without performing the measuring steps. This is because the measuring steps are used to describe the viscosity of the starch in the claim.
If applicant intends for these measurement steps to have patentable weight as requires steps in the method claim, then the claim could be rewritten as:
-- preparing a starch having a value of 100 or less in an expression 1.000-7xT-9xn in which T represents a gelatinization peak temperature (°C) of the starch. and n represents a setback viscosity (mPa s) thereof,
to obtain the value –
Applicant argues the structure of a starch as claimed is not disclosed by Curry.
Examiner does not find this persuasive because the structure disclosed by the present application is starch and Curry also teaches starch. There is not disclosed structural difference between the claimed starch and Curry’s starch. Rather, Applicant claims a starch having properties measured by particular measurement steps.
Admittedly, this is not taught by Curry, however, the discovery of a new property in an otherwise old material (e.g., starch) is not novel. If the claimed starch is structural distinct, then whatever structural difference exists should be recited in the claim.
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 1-5 and 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12286755 B2 in view of Curry (US4074959A)
In reference to claim 1 and 7 U.S. Patent No. US 12286755 B2 teaches a formed body producing method comprising: an accumulating step of accumulating a mixture including cellulose fibers and a binder, (depositing) the binder including starch particle configured to mutually bind the cellulose fibers when water is provided (moisturizing), and inorganic oxide particles, wherein the binder includes a composite particle in which the starch particle and the inorganic oxide particles are integrated such that the inorganic oxide particles are attached to the surface of the starch particle before the accumulating step, the inorganic oxide particles (claim 7) contain carbon, and the content of the carbon is 2% by mass or more relative to the mass of the inorganic oxide particles; a humidifying step of providing the accumulated mixture with water to facilitate a hydrogen bond between the cellulose fibers and the starch particle of the binder; and a forming step of obtaining a formed body by heating and applying pressure to the mixture provided with water (molding).
The claim does not recite depositing in air.
Curry discloses a method for manufacturing a molded body, comprising:
a deposition step of depositing a mixture containing fibers and a starch in air;
a moisturizing step of applying water to the mixture; and
a molding step of forming a molded body by heating and pressurizing the mixture to which the water is applied (“Dry fibres of
10% moisture content mechanical wood pulp mixed
with 4% dry starch are deposited on the wire 11 in an
air stream to form a random web of fibre and starch.
The web is sprayed with water by sprays 15 to provide
a moisture content of 35%. The moist web is consoli
dated by being subjected to hot pressing by passage
around the surface of a steam-heated cylinder 20 of
surface temperature 240° F. Two pressure nips are pro
vided by rollers 21 and 22 pressing against cylinder 20
with a pressure of 250 lb/linear inch.” [C3L1-9])
Curry demonstrates that the deposition of fiber and starch in air is known in the art.
Therefore it would have been obvious to form the formed body by depositing the materials in air.
A composition X with properties Y is met by a prior art teaching a composition X. See MPEP 2112.01.
Here, a composition (starch) having properties (e.g., a particular viscosity when measured using a particular method) is met by prior art that teaches the same composition.
In reference to claim 2-5 the cited prior art discloses the invention as in claim 1.
See quoted section of Curry, above, which teaches these claimed limitations.
Claims 1-6 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. US 11859346 B2 in view of Curry (US4074959A)
In reference to claim 1, US 11859346 B2 teaches a “formed body producing method comprising: an accumulating step of accumulating a mixture including fiber and starch, a humidifying step of providing the accumulated mixture with water, and a forming step of obtaining a formed body by heating and pressurizing the mixture provided with water” [Claim 1].
The claim does not recite depositing in air.
Curry discloses a method for manufacturing a molded body, comprising:
a deposition step of depositing a mixture containing fibers and a starch in air;
a moisturizing step of applying water to the mixture; and
a molding step of forming a molded body by heating and pressurizing the mixture to which the water is applied (“Dry fibres of
10% moisture content mechanical wood pulp mixed
with 4% dry starch are deposited on the wire 11 in an
air stream to form a random web of fibre and starch.
The web is sprayed with water by sprays 15 to provide
a moisture content of 35%. The moist web is consoli
dated by being subjected to hot pressing by passage
around the surface of a steam-heated cylinder 20 of
surface temperature 240° F. Two pressure nips are pro
vided by rollers 21 and 22 pressing against cylinder 20
with a pressure of 250 lb/linear inch.” [C3L1-9])
Curry demonstrates that the deposition of fiber and starch in air is known in the art.
Therefore it would have been obvious to form the formed body by depositing the materials in air.
A composition X with properties Y is met by a prior art teaching a composition X. See MPEP 2112.01.
Here, a composition (starch) having properties (e.g., a particular viscosity when measured using a particular method) is met by prior art that teaches the same composition.
In reference to claim 2-5 the cited prior art discloses the invention as in claim 1.
See quoted section of Curry, above, which teaches these claimed limitations.
In reference to claim 6 the cited prior art discloses the invention as in claim 1.
See US 11859346 B2 at “starch is a particle having an average particle diameter of 1.0 μm or more and 30.0 μm or less.” [Claim 7]
Claims 1-7 is rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. US 12138865 B2 in view of Curry (US4074959A)
In reference to claim 1, US 12138865 B2 teaches the claim except [see Claim 1 of US12138865] except that the US12138865 claim does not recite depositing in air.
Curry discloses a method for manufacturing a molded body, comprising:
a deposition step of depositing a mixture containing fibers and a starch in air;
a moisturizing step of applying water to the mixture; and
a molding step of forming a molded body by heating and pressurizing the mixture to which the water is applied (“Dry fibres of
10% moisture content mechanical wood pulp mixed
with 4% dry starch are deposited on the wire 11 in an
air stream to form a random web of fibre and starch.
The web is sprayed with water by sprays 15 to provide
a moisture content of 35%. The moist web is consoli
dated by being subjected to hot pressing by passage
around the surface of a steam-heated cylinder 20 of
surface temperature 240° F. Two pressure nips are pro
vided by rollers 21 and 22 pressing against cylinder 20
with a pressure of 250 lb/linear inch.” [C3L1-9])
Curry demonstrates that the deposition of fiber and starch in air is known in the art.
Therefore it would have been obvious to form the formed body by depositing the materials in air.
In reference to claim 2-5 the cited prior art discloses the invention as in claim 1.
See quoted section of Curry, above, which teaches these claimed limitations.
In reference to claim 6-7 the cited prior art discloses the invention as in claim 1.
See claims 3-4 of US12138865.
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.
Claim 1-5 is/are rejected under 35 U.S.C. 102 as being unpatentable over Curry (US 4074959 A)
In reference to claim 1, Curry discloses a method for manufacturing a molded body, comprising:
a deposition step of depositing a mixture containing fibers and a starch in air;
a moisturizing step of applying water to the mixture; and
a molding step of forming a molded body by heating and pressurizing the mixture to which the water is applied (“Dry fibres of
10% moisture content mechanical wood pulp mixed
with 4% dry starch are deposited on the wire 11 in an
air stream to form a random web of fibre and starch.
The web is sprayed with water by sprays 15 to provide
a moisture content of 35%. The moist web is consoli
dated by being subjected to hot pressing by passage
around the surface of a steam-heated cylinder 20 of
surface temperature 240° F. Two pressure nips are pro
vided by rollers 21 and 22 pressing against cylinder 20
with a pressure of 250 lb/linear inch.” [C3L1-9])
A composition X with properties Y is met by a prior art teaching a composition X. See MPEP 2112.01.
Here, a composition (starch) having properties (e.g., a particular viscosity when measured using a particular method) is met by prior art that teaches the same composition.
In reference to claim 2-5 the cited prior art discloses the invention as in claim 1.
See quoted section above, which teaches these claimed limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744