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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1, lines 2-3 recites “calcium silicate phosphate CaO - SiO2 - P2O5 in the amounts of”. The claim should instead read, “is present in the amounts of”.
Claim 1, lines 4-5, recites “in the following amounts of”. The claim should instead read, “is present in the following amounts of”.
Appropriate correction is required.
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 1-2 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 1 recites “zinc oxide from 3 to 5, stearic acid from 1 to 3, tertiary butyl-benzothiazolyl sulphenamide from 0.6 to 1 and sulphur from 2 to 3.” which causes confusion. It is unclear what the basis for these amounts are. For the purposes of examination, the claim is interpreted to be in parts by mass per 100 parts by mass rubber.
Claim 2 is rejected for being dependent on claim 1.
Claim Analysis
Summary of Claim 1:
A composition of an elastomeric composite based on natural rubber, containing an oxide filler and ingredients, wherein,
the oxide filler - calcium silicate phosphate CaO - SiO2 - P2O5 in the amounts of 25 to 75 parts by mass per 100 parts by mass rubber and
the ingredients - zinc oxide, stearic acid, tertiary butyl-benzothiazolyl sulphenamide and sulphur in the following amounts -
zinc oxide from 3 to 5, stearic acid from 1 to 3,
tertiary butyl-benzothiazolyl sulphenamide from 0.6 to 1 and
sulphur from 2 to 3.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Al-Sehemi et al. (US 20210054175).
Regarding claim 1, Al-Sehemi et al. disclose a composition of an elastomeric biocomposite Example 2 comprising 100 parts of natural rubber, 50 parts of filler that is sol-gel derived glass having the composition of CaO, SiO2 P2O5, and Ag2O, 3.5 parts of zinc oxide, 2.5 parts of stearic acid, 3 parts of sulfur, and 2.5 parts of tertiary butyl benzothiazolyl sulpheamide (TBBS), thereby reading on the oxide filler of the instant claim and lying within the claimed range of the oxide filler, zinc oxide, stearic acid, and sulphur, but lying outside the claimed range of tertiary butyl benzothiazolyl sulpheamide.
However, Al-Sehemi et al. broadly teach the amount of tertiary butyl benzothiazolyl sulpheamide presnt in the composition is 1 to 2.5 (claim 1), thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the range taught by Al-Sehemi et al.
Allowable Subject Matter
Claim 2 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 is allowed over the closest prior art, Al-Sehemi et al. (US 20210054175).
Al-Sehemi et al. disclose a composition of an elastomeric biocomposite comprising natural rubber, zinc oxide, stearic acid, tertiary butyl-benzothiazolyl sulfenamide, and sulfur among others.
Al-Sehemi et al. do not teach or fairly suggest an elastomeric composite comprising the oxide filler having the specific amount of components as recited in the instant 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11359076. Although the claims at issue are not identical, they are not patentably distinct from each other because both are related to a composition of an elastomeric biocomposite comprising natural rubber, a calcium silicate phosophate, zinc oxide, stearic acid, tertiary butyl-benzothiazolyl sulfenamide, and sulfur in overlapping amounts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763