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 .
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. 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.
3. Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 17/886503. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and copending claims are not identical, they overlap to the extent that one practicing the instantly claimed inventions would practice the copending inventions and vice versa.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/156403 Schauber et al., the machine English translation provided by the examiner being referenced below unless otherwise noted, in view of US Pat. No. 2020/0080236 Fischer et al.
Regarding claims 1 and 5-17:
Schauber discloses the instantly claimed molded article comprising a polymer matrix of crosslinking an aliphatic polyketone with the instantly claimed diamines to give imine groups. See Schauber, the abstract, page 2, lines 12-20, page 3, lines 20-23, page 10, lines 21-22, noting that lower flammability is desired, page 11, lines 13-17 noting the formation of imine groups upon crosslinking and the diamine crosslinker, and lines 21-23, page 12, line 2 to page 18, line 18, noting the crosslinkers which fall within the scope of those of the instant claims 1, 6, 8, and 15, page 36, lines 22-23, which falls within the scope of the instant claim 7, page 53, lines 4-23, page 54, lines 1-22, noting the plasticization step of the instant claim 10 of line 12 and that no added solvent is required by Schauber, and the remainder of the document.
The additives of Schauber, page 63, lines 10-13 fall within the scope of the instant claim 5.
Schauber, page 23, lines 1-3 falls within the scope of the instant claim 12.
The method steps of Schauber, page 58, lines 4-8 and the temperatures of lines 17-21 fall within the scope of the instant claims 13 and 14.
The process steps of Schauber fall within those of the instant claims 8-14.
Regarding claims 1-17:
Schauber does not disclose the flame retardants of the instant claims 1-17 and amounts thereof, including of the instant claims 1-4.
Fischer discloses adding flame retardants to crosslinked aliphatic polyketones at the abstract, noting the aliphatic polyketones, and paragraph [0103], noting the crosslinking agents and flame retardants. Note that Fischer states that these additives are known to the skilled person. Fischer, paragraph [0113], discloses phosphorous containing flame retardants. Note that this encompasses the phosphorous compounds of the instant claim 3. The amounts of additives of Fischer, paragraph [0120] fall within the scope of the instant claim 4.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use the instantly claimed amounts of flame retardants and instantly claimed flame retardants, including those of the instant claims 1-4, in the inventions of the instant claims 1-17 from the disclosures of Schauber and Fischer because using the conventional additives of Fischer in their disclosed amounts would have been expected to give the function described by the name “flame retardant” to the compositions of Schauber in proportion to the amounts thereof used and Fischer shows it to be conventional to add flame retardants to aliphatic polyketones, including those having crosslinking agents added thereto.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762