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 1-17 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.
Claims 1-17 are confusing as to intent because the relevance of the ranges of percent by weight of blowing agent and/or co-blowing agent and, in the case of claims 6-9, the polyester polyol of the claims can not be definitively determined without the basis for their determination being set forth in the recitations of the claims.
Claims 1-17 are confusing as to intent because the relevance of the ranges of percent reduction of de-frothing time of the polyol premix values of the claims can not be definitively determined without the basis for their determination being set forth in the recitations of the claims.
Claims 3 & 4 recite the limitation "said physical co-blowing" in lines 1 & 2. There is insufficient antecedent basis for this limitation in the claim. Though claim 1 recites “a physical co-blowing agent having defrothing properties” and in the instant case it may be acceptable for claim 1 to refer back to the “frothing co-blowing” effects of the claimed “physical co-blowing agent having defrothing properties” it introduces ambiguity to attempt to refer back to the “physical co-blowing” effect not referred to previously, as opposed to the “defrothing co-blowing” effects of the “physical co-blowing agent having defrothing properties” referred to by claim 1 that correlate with actual “de-frothing” effects as opposed to any correlation with “physical” effects.
Appropriate correction is required.
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 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.
Claims 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ling et al.(9,000,061).
Ling et al. discloses employment of transHFCO-1233zd along with various co-blowing agents in polyester polyol containing polyol premixes (see abstract, column 2 lines 11-55 and column 6 line 10 – column 7 line 16).
Ling et al. differs from applicants’ claims in that it does not particularly require the particular usage of the co-blowing agents of applicants’ claims in their particular arrangements. However, overlap, including provisions for the use of HFO-1336mzzm(Z) & trans dichloroethylene, is provided for by Ling et al. for purposes of achieving good polyol premixes useful in developing environmentally friendly foams with good and desirable properties (column 2 lines 4-13 and column 6 lines 10-63). Accordingly, it would have been obvious for one having ordinary skill in the art to have utilized any of the blowing agents of Ling et al. in the premixes of Ling et al., including those it recites corresponding with those of applicants’ claims, including HFO-1336mzzm(Z) & trans dichloroethylene and others of the claims, for the purpose of achieving good polyol premixes useful in developing environmentally friendly foams with good and desirable properties in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Further, as to amount selections, overlap is made evident Ling et al. (column 6 lines 39-62). Further, it has long been held that where the general conditions of the claims are disclosed in the prior art, discovering the optimal or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; In re Reese 129 USPQ 402 . Further, a prima facie case of obviousness has been held to exist where the proportions of a reference are close enough to those of the claims to lead to an expectation of the same properties. Titanium Metals v Banner 227 USPQ 773. (see also MPEP 2144.05 I) Similarly, it has been held that discovering the optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272,205 USPQ 215 (CCPA 1980). Hereto, it would have been obvious for one having ordinary skill in the art to have utilized the blends of blowing agents of Ling et al. in the premixes of Ling et al. in any proportions together and total combined amounts within the premixes as provided for by Ling et al. for the purpose of achieving good polyol premixes useful in developing environmentally friendly foams with good and desirable properties in order to arrive at the products of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Finally, as Ling et al. is directed towards premixes that offer very good outcomes on product development and owing to the closeness of the material effects provided for by Ling et al., it is held that the effect of amount arrangements being sufficient to reduce de-frothing time is an effect that would have necessarily followed from the premix formulations provided for through the teaching of Ling et al.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,920,016. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite combinations of blowing agents and polyols that overlap in make-up, amounts and arrangements in a manner that would have been obvious for purposes of achieving acceptable mixes for good product development in the absence of a showing of new or unexpected results.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9,000,061. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite combinations of blowing agents and polyols that overlap in make-up, amounts and arrangements in a manner that would have been obvious for purposes of achieving acceptable mixes for good product development in the absence of a showing of new or unexpected results. Regarding claims 5-9, though claims of patent only recite polyol, selection of polyester and polyether polyols are the two most readily envisioned selections in these synthesis areas and distinction in this regard is not evident.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,344,136. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite combinations of blowing agents and polyols that overlap in make-up, isomer selection, amounts and arrangements in a manner that would have been obvious for purposes of achieving acceptable mixes for good product development in the absence of a showing of new or unexpected results. Regarding claims 5-9, though claims of patent only recite polyol, selection of polyester and polyether polyols are the two most readily envisioned selections in these synthesis areas and distinction in this regard is not evident.
Response to Arguments
Applicants’ arguments have been considered. However, rejections are maintained for all the reasons as set forth above.
Regarding the rejections under 35USC112, it is held and maintained that a sufficient basis for the ranges of values have not been set forth by the claims. It can not, nor has it been addressed by applicants, be determined if the ranges of “% by weight” are based on total weight of the composition, total weight of the polyol, total weight of the blowing agent and/or some other standard altogether. Applicants’ arguments on reply offer no address of this deficiency and ambiguity in the claims.
Regarding arguments concerning the ambiguity surrounding the ranges of percent reduction of de-frothing time of the polyol premix values of the claims, the facts of the instant situation are different from those of the cited case law. Particularly, in the instant case a specific range of defroth time reduction values are set forth by the claims. However, no parameters for determining such reduced times are set forth by the instant claims, and it is not seen or agreed that there is a universally accepted means for determining defrothing times of polyol premixes to render recitation of appropriate parameters unnecessary.
Position regarding claims 3 & 4 addressing amendments made on reply is addressed in the body of the rejection above.
Applicants’ arguments concerning the rejection under 35USC103 are unpersuasive because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Differences in the claims regarding co-blowing agent selection and amounts are appropriately addressed in the body of the rejection above and distinction in fact has not been made evident. In the instant case it is not seen that the number of species derogates from the position of obviousness as they are all performing the like (co)blowing function.
Regarding allegations of criticality based on showings of new or unexpected results, it is seen, held and maintained that applicants have not established showings of new or unexpected results attributable to the invention of the claims that are commensurate in scope with the scope of the claims as they currently stand. Further, regarding referred to testing to achieve such ends, at this time no such test have been made of record.
Regarding applicants’ arguments concerning the rejections under the heading “Double Patenting”, it is held in response to applicant’s request to hold in abeyance a response, such as, a terminal disclaimer (TD) to the pending ODP rejection, it is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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