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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Examiner’s Note
It is noted that claim 13 of the claim set filed 22 January 2024 differs from claim 13 of the claim set filed 9 November 2023. It is also noted that claim 13 of the claim set filed 9 November 2023 addresses the errors described on page 6 of the non-final Office action filed 15 December 2022 during the prosecution of related application 17/188,663. Given that claim 13 of the instantly pending claims reintroduces these errors, for the purpose of advancing prosecution, claim 13 of the claim set filed 9 November 2023 will be examined instead of claim 13 of the claim set filed 22 January 2024 (i.e., the instantly pending claims).
Application Data Sheet/Priority
The application data sheet (ADS) filed 9 November 2023 indicates that the instant reissue application is a reissue of patented application 17/188,633, filed 1 March 2021. This is incorrect because the instant reissue application is actually a continuation reissue of 17/188,633 which is a reissue of patented application 15/268,508. As a result the instant ADS is defective.
37 CFR 1.76(c) provides the procedure for correcting and updating not only an ADS, but also information otherwise of record (e.g., information provided on the most recent filing receipt). Any ADS filed after the filing date of the application or the submission of a first ADS is considered a corrected (or updated) ADS even if an ADS was not previously submitted. Such a corrected ADS must identify the information that is being changed with underlining for insertion and strike-through or brackets for text removed, except that identification of information being changed in not required for an ADS included with an initial submission under 35 U.S.C. 371. In general, the identification of the information being changed should be made to the most recent filing receipt. See MPEP 601.05 I.
Claim Rejection – 35 USC §251
Claims 1, 4, 6, and 8-16 are rejected under 35 USC §251 as being a broadening in a reissue application filed outside the two year statutory period.
Claims 1, 4, 6, and 8-16 are broader as they fail to recite all the limitations of the original claims. A claim is broader in scope than the original claims if it contains within its scope any conceivable product or process which would not have infringed the original patent. A claim is broadening if it is broader in any one respect even though it may be narrower in other respects.
The specification of the instant application identifies the instant application as being a reissue continuation of application 17/188,633. However, as is noted above in the Applicant Data Sheet/Priority section, the ADS indicates that the instant application is reissue of 17/188,633 not a continuation reissue. Because of this the instant continuation reissue application does not effectively claim priority to the reissue application 17/188,633 and thus there is no continuity with reissue application 17/188,633 (see continuity data map below).
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Due to the lack of continuity between the instant application and reissue application 17/188,633, the instant application effectively seeks to broaden application 15/268,508 which was issued as U.S. Patent No. 10,316,120 on 11 June 2019 which is more than 2 years prior to the filing date of the instant application. As a result, the instant reissue application improperly seeks to broaden the claims of U.S. Patent No. 10,316,120 outside the two year statutory period.
Claim Rejection - 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.
Claim 13 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The phrase “for example” recited in claim 13 renders the claim indefinite because it is unclear whether the limitation following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Impermissible Recapture
Claims 1, 4, 6, and 8-16 are rejected under 35 U.S.C. §251 as being an improper recapture of broadened claimed subject matter surrendered during the prosecution of the original application upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed.Cir.). 1984); MBO Laboratories, Inc. v. Becton, Dickenson, & Co., 602 F.3d 1306, 1316-1317, 94 USPQ2d 1598 (Fed. Cir. 2010).
A broadening aspect is present in the reissue which was not present in the application for patent. The record of the original application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that Applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. §251, and the broader scope of claimed subject matter surrendered in the original application for the patent cannot be recaptured by the filing of the present reissue application.
Three Step Test for Recapture per MPEP §1412.02
MPEP §1412.02 reads, in part:
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
When applied to the instantly pending claims the three-step process is as follows:
Step 1: instantly pending claim 1 is broader than claim 1 of the original patent (U.S. Patent No. 10,316,120) by excluding the limitations “which is pentaerythritol” and “a blend comprising two or more polyvinyl alcohol polymers, each polymer having a degree of hydrolysis of at least 98%, and wherein the blend comprises one high molecular weight polyvinyl alcohol polymer having a molecular weight in the range of about 60,000 to about 120,000 and at least one low molecular weight polyvinyl alcohol polymer having a molecular weight in the range of from about 5,000 to about 30,000”.
Step 2: during prosecution of application 15/268,508 which matured into the original patent, on 18 April 2018, claim 1 was amended so as to require the claimed plasticizer to be pentaerythritol. Subsequently, on 6 December 2018, the Patent Owner asserted that recitation of pentaerythritol distinguished the claimed invention over the applied prior art (Bastioli et al., WO 93/09171) because it only discloses pentaerythritol in a long list of plasticizer and does not mention any advantages associated with pentaerythritol.
Furthermore, on 6 March 2019, claim 1 was further amended so as to replace the limitation “polyvinyl alcohol polymer with a degree of hydrolysis of at least 98wt% or a blend of the polyvinyl alcohol polymer” with the limitation “a blend comprising two or more polyvinyl alcohol polymers, each polymer having a degree of hydrolysis of at least 98%, and wherein the blend comprises one high molecular weight polyvinyl alcohol polymer having a molecular weight in the range of about 60,000 to about 120,000 and at least one low molecular weight polyvinyl alcohol polymer having a molecular weight in the range of from about 5,000 to about 30,000”. These amendments led to the allowance of the claims.
As such, the limitations of the claimed plasticizer being “pentaerythritol” and the polyvinyl alcohol resin being “a blend comprising two or more polyvinyl alcohol polymers, each polymer having a degree of hydrolysis of at least 98%, and wherein the blend comprises one high molecular weight polyvinyl alcohol polymer having a molecular weight in the range of about 60,000 to about 120,000 and at least one low molecular weight polyvinyl alcohol polymer having a molecular weight in the range of from about 5,000 to about 30,000” are surrendering generating limitations. These limitations, however, are now deleted in their entirety from proposed claim 1.
It is noted that if an original patent claims limitation now being omitted or broadened in the present reissue application was originally relied upon by Applicant in the original application to make the claims allowable, the omitted limitation relates to subject matter previously surrendered by Applicant. See MPEP 1412.02(II)(B)(1).
Step 3: the recapture rule cannot be avoided since the surrender generating limitation has been entirely eliminated from instantly pending claim 1. It is noted that instances where a surrender generating limitation has been entirely from a claim, present in a reissue application, and not replaced by a new surrender generating limitation, then a recapture rejection under 35 USC §251 is proper and must be made for that claim. See MPEP 1412.02(C)
In the instant case, the surrender generating limitations described above have been entirely eliminated from instantly pending claim 1 and not replace with a new surrender generating limitation. As such, instantly claim 1 and its dependent claims 4, 6, and 8-16 violate the recapture rule.
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, 4, 6, and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over rejection Bastioli et al., US 5,462,981 (“Bastioli”) in view of Kohnen et al. US 2005/0001348 (Kohnen) and McDermott et al., US 5,543,439 (“McDermott”).
Regarding claim 1, Bastioli discloses a method of manufacturing a plasticized polyvinyl alcohol polymer (hereafter “PVOH”) mixture (abstract, col. 2 lines 40-59). The disclosed method comprises the steps of introducing a mixture of PVOH, water, and a plasticizer into an extruder and processing the mixture under shear stress (col. 2 line 40-col. 3 line 18, col. 5 line 58-col. 6 line 2) which corresponds to the claimed introducing a polyvinyl alcohol polymer into a mixing reactor. The PVOH has a degree of hydrolysis of from 60 to 99% which overlaps, and therefore renders obvious, the claimed degree of hydrolysis (col. 2 line 61). See MPEP 2144.05. Bastioli teaches that the use an extruder with two screws ensure higher stress values (col. 3 lines 10-11). The disclosed PVOH mixture may additionally comprise additive (col. 5 lines 2-7).
The extruder may be a twin-screw extruder comprising an output nozzle (also referred to as an “extrusion orifice” in the reference) (col. 2 lines 62- col. 3 line 28) which corresponds to the claimed mixing reactor comprising a blending chamber, primary inlet, a primary outlet, and at least two components extending between the primary inlet and the primary outlet. This interpretation is supported by the original patent which discloses the use of a twin-screw extruder (col. 13 lines 49-51, col. 18 lines 30-35).
It is noted that a twin-screw extruder necessarily comprises a barrel though which the screws run through. Bastioli teaches that the extruder comprises a chamber having an initial zone wherein the PVOH is pre-plasticized and subsequent zones wherein the subsequent zones are brought to a maximum temperature of from 140 to 210˚ C (col. 2 line 62-col. 3 line 8, col. 6 line 57-col. 7 line 42). The barrel of the extruder corresponds to the claimed blending chamber and one or more of the zones in the barrel correspond to the claimed reaction zone. The maximum temperature range taught by Bastioli renders obvious the claimed maximum temperature. Bastioli goes on to teach that the temperature changes from the initial zone(s) to the subsequent zones (col. 3 line 62-col. 4 line 8, col. 5 lines 60-65) which corresponds to the claimed controlling the location of the reaction zone by changing the temperature profile.
Since the mixing of the PVOH, water, and a plasticizing occurs under shear stress, the screws of the extruder are understood to be arranged to apply a shearing force to the components of the mixture from the inlet through a reaction zone to the outlet as claimed. The water and plasticizer present in the mixture correspond to the claimed the processing agent and plasticizer.
Bastioli teaches reducing the water content in the mixture by degassing upstream of the extruder’s extrusion orifice (col. 3 lines 21-25). Since gas removed by degassing must have a way out of the extruder the extruder must necessarily comprise a secondary outlet located between the reaction zone and the primary outlet arranged to allow removal of water (i.e., a processing agent) from the chamber after mixing as claimed.
The amount of water present in the mixture ranges from 5 to 20 wt% (col. 3 lines 21-25) which renders obvious the claimed range of amounts of processing agent in the reaction mixture. After processing, the mixture is passed from the extruder nozzle (col. 3 lines 16-25) which corresponds to the claimed passing from the primary outlet.
Bastioli is silent regarding the presence of one or more secondary inlets for introducing a processing agent and a plasticizer. Bastioli also does not explicitly disclose a mixing reactor comprising at least two inter-engaging components.
Kohnen discloses a method of manufacturing a plasticized PVOH mixture in a twin-screw extruder wherein the PVOH mixture comprises a PVOH, water, and a plasticizer [abstract, 0026-0038, 0051, 0056-0058]. Kohnen discloses configuring the extruder so as to have a water and plasticizer inlet downstream of the feed zone (i.e., the primary inlet) in order to avoid caking at the inlet of the extruder [0058].
McDermott discloses an extruded PVOH composition that is produced by mixing an additive to a PVOH resin in an extruder (abstract, col. 3 line 60-col. 4 line 16, col. 11 lines 11-col. 12 line 22). McDermott teaches the use of a twin-screw extruder wherein the screws are intermeshed so that the material being extruded is subjected to high shear stress conditions which contributes to the dispersing of the additives (col. 11 lines 52-56).
Bastioli and Kohnen are both directed towards methods of manufacturing a plasticized PVOH mixture in a twin-screw extruder wherein the PVOH mixture comprises a PVOH, water, and a plasticizer. It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have modified the method of Bastioli by configuring the extruder so as to have an inlet for water and plasticizer downstream of the primary inlet as taught by Kohnen with the expectation of preventing caking at the primary inlet. The secondary inlet in the extruder of the method of modified Bastioli would have corresponded to the claimed secondary inlet.
Bastioli and McDermott are both directed towards that manufacture of PVOH resin compositions using an extruder. In light of the teachings of McDermott, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have arranged the twin screws of the extruder used in the method of Bastioli so as to be intermeshing in order to produce high-shear stress conditions which contributes to the dispersing of additives. The intermeshing screws of the twin-screw extruder used in the resulting method would have read on the claimed inter-engaging components.
Regarding claim 4, Bastioli teaches that water is present in PVOH mixture in amounts ranging from 5 to 20 wt% (col. 3 lines 21-25) which renders obvious the claimed range of amounts of processing agent.
Regarding claim 6, Bastioli teaches that the initial zone of the extruder (corresponding to the claimed first region) is kept at temperature of no higher than 200˚ C (col. 2 line 62-col. 3 line 3) which encompasses, therefore renders obvious, the claimed ambient temperature at a first region. Bastioli also teaches that the subsequent extruder zones generally having a temperature of between 140 and 210˚ C which renders obvious the claimed 200˚ C adjacent the secondary outlet and the claimed reaction zone temperature of at least 200˚ C (col. 3 lines 3-8).
Regarding claim 11, as is noted above, Bastioli teaches a secondary outlet configured to degas the mixture in order to reduce its water content which corresponds to the claimed secondary outlet configured to permit removal of processing agent from the mixing reactor after mixing.
Regarding claim 12, Bastioli teaches that upon extrusion the PVOH mixture has a water content of from 2 to 6 wt% (col. 5 lines 43-55) which renders obvious the claimed water content range.
Regarding claim 13, Bastioli teaches that the plasticizer may be, inter alia, pentaerythritol (col. 3 lines 42-50).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli in view of Kohnen and McDermott as applied to claim 1 above, and further in view of Hossan et al., US 2004/0209977 (“Hossan”).
Regarding claim 8, as is described above, Bastioli as modified with Kohnen teaches a method which renders obvious the method of claim 1. Bastioli further teaches that the extruder used in the disclosed method comprises a chamber having at least two regions wherein a first plasticizing step (i.e., upstream reaction step) and second mixing step (i.e., downstream intensive mixing step) are performed (col. 2 line 62-col. 3 line 18, claims 1 and 2). Additionally, Bastioli teaches that the disclosed method comprises a mixing step to produce a substantially homogeneous melt (col. 3 lines 12-16).
Hossan discloses a screw for a multiple screw extruder wherein the screw comprises a mixing section having two flights [abstract, 0004]. Hossan teaches that the preferred screw elements for mixing section are two flighted kneading blocks because of their ability to facilitate dispersive mixing at high speeds and high throughput [0022]. Hossan goes on to teach that the kneading blocks are most commonly flat paddles [0022].
Modified Bastioli and Hossan are both directed towards the use of an extruder to produce polymer mixtures.
It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have incorporated the kneading block of the extruder screws disclosed by Hossan into the extruder screws used in the method of modified Bastioli in order to facilitate dispersive mixing at high speeds and high throughput. The resulting method would have utilized an extruder comprising a plasticizing region (i.e., a reaction zone) and a downstream mixing region (i.e., an intensive mixing region located downstream of the reaction zone).
Regarding claim 9, Hossan teaches pairs of inter-engaging paddles [0022, Fig. 1].
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bastioli in view of Kohnen as applied to claim 1 above, and further in view of Bryan, US 2005/0087904 (“Bryan”).
Regarding claim 10, Bastioli as modified by Kohnen teaches what is described above. Additionally, Bastioli teaches extruding the PVOH mixture produced by the disclosed method (col. 5 lines 38-42). Modified Bastioli is silent regarding the presence of a pump located downstream of the primary outlet.
Bryan discloses a method of producing an extruded polymer mixture using a twin-screw extruder and a downstream single screw pump [abstract, 0001, 0021-0026,0037, 0047-0050, Fig. 1]. The single screw pump functions to force a polymer mixture through an extrusion die [0037].
Modified Bastioli and Bryan are both directed towards method of producing polymer mixture using an extruder. In light of the teachings of Bryan, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have coupled a single screw pump downstream of the extruder’s primary outlet in the method disclosed by modified Bastioli in order to provide a means to force the polymer mixture through an extrusion die. The single screw pump in the resulting method would have read on the claimed single screw extruder unit.
Claim 14 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli in view of Kohnen and McDermott as applied to claim 1 above, and further in view of Marten et al., US 5,137,969 (“Marten”) .
Regarding claim 14, as is described above, Bastioli as modified with Kohnen and McDermott teaches a method which renders the method of claim 1 obvious. Additionally, Bastioli teaches that the molecular weight of the PVOH resin may be as low as 50,000 (col. 2 line 60).
Modified Bastioli is silent regarding the PVOH resin being
Marten discloses a method for extruding polyvinyl alcohol wherein the method comprises introducing a PVOH resin into a twin screw extruder (abstract, col. 6 lines 52-53, col. 7 lines 4-27). The PVOH resin may be in the form of a blend comprising a high molecular weight PVOH and low molecular weight PVOH which reads on the claimed blend of the polyvinyl alcohol (col. 8 line 67-col. 9 line 3). The low molecular weight PVOH has a degree of polymerization (DPn) of from 200 to 1,200 and the high molecular weight PVOH has a degree of polymerization of from 1,200 to 2,400 (col. 9 lines 1-3). Given that the molar mass of vinyl alcohol is about 44 g/mol the molecular weight of the low molecular weight PVOH ranges from about 8,800 to about 52,800 g/mol and the molecular weight of the high molecular weight PVOH ranges from about 52,800 to about 105,600 g/mol. Marten teaches that the addition of a small amount of high molecular weight PVOH to a major component of lower molecular PVOH produces a composition having improved tensile strength and flexibility (col. 8 line 67-col. 9 line 12).
Marten teaches a means of extruding the disclosed PVOH resin blend using a twin screw extruder wherein the high molecular weight PVOH is introduced into an initial section of the extruder and the low molecular weight PVOH is added to the extruder after the high molecular weight PVOH has been melted (col. 9 lines 38-45).
It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have utilized a PVOH blend comprising a small amount of high molecular weight PVOH in a major component of lower molecular PVOH disclosed by Marten in the method of modified Bastioli with the expectation of producing an extruded PVOH mixture having improved tensile strength and flexibility. In making this modification it would have been obvious to one of ordinary skill in the art to have selected a low molecular weight PVOH which meets the requirements of both Bastioli and Marten such as a PVOH having a molecular weight of about 50,000 g/mol. It would have also been obvious to have utilized the technique disclosed by Marten wherein the high molecular weight PVOH is added to the initial section of the extruder and the low molecular weight PVOH is added to the extruder after the high molecular weight PVOH has been melted. The resulting method would have low molecular weight PVOH and a relatively high molecular PVOH resin as recited in claim 14.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR §1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which U.S. Patent No. 10,316,120 is or was involved. These proceedings would include interferences, reissues, reexaminations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR §1.56, to timely apprise the Office of any information which is material to the patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§1404, 1442.01, and 1442.04.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571)270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at (571) 272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
Conferee:
/ELIZABETH L MCKANE/Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991