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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11441000 Creasey et al. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and the copending claims are so close that it would have been obvious to perform inventions within the scope of the instant claims based on the patented claims of Creasey. It is noted that the patented claims recite “volume/volume” regarding the sodium hydroxide solution and surfactant concentration while the instant claims recite weight/weight bases for each of these amounts. It is noted that the density of water is about 1 g/ml. The density of sodium hydroxide is about 2.13 g/ml. Therefore the 7.5% weight/weight sodium hydroxide is expected to give a volume/volume amount of 3.5 g/ml. This is very close to “about 5% of the instantly claimed amounts of sodium hydroxide particularly considering the definition of “about”.
See MPEP 2144.05 Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions [R-01.2024], particularly “I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS”, more particularly “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).”
The above cited cases include the relatively small differences between the instant claims and the patented claims noted above, particularly considering the recitation of “about” in each set of claims.
The surfactant densities are expected to be close to 1 g/ml and therefore will give even closer amounts based on the different percentages bases of the patented and instant claims.
It would have been obvious to one of ordinary skill in the art to make the instantly claimed inventions from the patented claims because they are so close to each other that slightly modifying the amounts of sodium hydroxide and surfactant to go from amounts of the patented claims to amounts of the instant claims would not have been expected to give a significant difference between the instantly claimed inventions and the patented claimed inventions, particularly considering the definition of “about” in each set of claims. See MPEP 2144.05.
The patented claims do not require solids and therefore encompass the limitation of the instant claims 4, 9, 10, and 18.
The patented claims necessarily give the inventions of the instant claims 1-18 in view of the above obviousness statement.
The mixing of the patented claimed components gives the method of the instant claims 19 and 20 because the patented claims contain the same ingredients which must therefore give the same effects, including inhibition of microbial growth in a product.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat Application Publication No. 2014/0171545 Creasey et al.
Regarding claims 1, 3, 5, 7, 8, 11, 12, 14, 15, and 17:
Creasey discloses treating carbonate fillers, which are the instantly claimed carbonate fill materials, with compositions which may contain sodium sulfate, ammonium sulfate, and sulfuric acid in amounts which appear to be achievable from the instantly claimed solubility enhancing composition, sodium hydroxide solution, surfactant, and neutralization that gives a pH of about 2.5-about 3.5 at least one time during preparation of the carbonate enhancing composition because the instant claims do not limit the amounts of the instantly claimed solubility enhancing composition, sodium hydroxide solution, surfactant, and neutralization that gives a pH of about 2.5-about 3.5 at some point and the instant claims do not limit the volume of neutralizer of the last 3 lines of the instant claim 1 and do not limit the amount of sodium hydroxide that is to be added to the carbonate enhancing composition. It is noted that the concentration of sodium hydroxide in the sodium hydroxide solution is limited to a concentration based on weight of sodium hydroxide to weight of the total aqueous phase of the carbonate enhancing composition. This limits the concentration of sodium hydroxide in the sodium hydroxide solution per se. It does not require that any particular amount of the sodium hydroxide solution be added to the carbonate enhancing composition. See Creasey, paragraph [0015]. The sodium benzoate is an anionic surfactant necessarily because it has a hydrophobic aromatic ring and a hydrophilic anionic salt group. The sodium benzoate and its amount of Creasey, paragraph [0024] therefore falls within the scope of the instantly claimed surfactant and amounts thereof. The sodium sulfate of Creasey, paragraph [0015] could have been made by adding sodium hydroxide to the sulfuric acid of Creasey, paragraph [0015]. Since the amounts of sodium hydroxide per se are not limited by the instant claims, this meets the sodium hydroxide limitation of the instant claims because any portion of water can be taken from the final composition of Creasey so as to give the amounts of sodium hydroxide solution per total aqueous phase volume of the carbonate enhancing composition on a weight to weight basis required by the instant claims. Note that the limitation of the instant claims regarding the sodium hydroxide solution amount does not limit the amount of sodium hydroxide per se because it does not limit the amount of sodium hydroxide solution in the final mixture and in the carbonate enhancing composition. It only limits the amounts of the sodium hydroxide in the sodium hydroxide solution relative to the amount of total aqueous phase volume of the carbonate enhancing composition on a weight to weight basis.
Creasey, paragraph [0017] prefers ammonium sulfate and discloses sulfuric acid. Creasey, paragraph [0019] discloses the addition of acid in the amounts therein. Creasey, paragraph [0022] then discloses adding metal sulfate and diluting their compositions which is encompassed by “comprises” and other open language of the instant claims.
Creasey, paragraph [0032] exemplifies their solutions having a pH of about 2.5 to 3.5. The large amounts of sulfuric acid of Creasey, paragraph [0015] would give pHs of less than 1.0. One could readily raise this to the exemplified pH of Creasey, paragraph [0032] by adding sodium hydroxide which would give water and the sodium sulfate of Creasey, paragraph [0015].
Creasey, paragraph [0016] discloses treating calcium carbonate filler with their composition. Creasey, claims 2 and 13 discloses treating other carbonate fillers with their composition.
Creasey, paragraph [0025] discloses adding their enhanced carbonate fill materials to plastics.
These compositions of Creasey fall within the scope of those of the instant claims 1, 3, 5, 7, 8, 11, 12, 14, 15, and 17.
Creasey does not exemplify the instantly claimed inventions or disclose their inventions in the instantly claimed terms.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the instantly claimed inventions from the disclosure of Creasey because Creasey encompasses the instantly claimed inventions and using the instantly claimed ingredient combinations and ingredient amounts in the compositions of Creasey would have been expected to give compositions having the properties disclosed by Creasey. It is particularly noted again that the instant claims do not limit the amounts of the various sub-compositions in the final composition and do not limit other ingredients which may be added in any amount due to the open language of the instant claims. It is therefore not seen that the instantly claimed limitations of ingredient amounts distinguishes the compositions of the instant claims over the compositions of Creasey because the instantly claimed ingredient amounts do not limit the ingredient amounts in the final compositions of the instant claims.
Regarding claims 2, 4, 9, 10, 13, and 18:
Creasey does not disclose their compositions as containing solids and the low pHs thereof would have been expected to dissolve the solids used in Creasey’s compositions. Note the low pH exemplified by Creasey at paragraph [0032].
Regarding claims 6 and 16:
Creasey exemplifies 3.0 g of silver sulfate in over a liter of water which falls within the scope of the instant claim 6.
Regarding claims 19 and 20:
Making the plastic products and using the plastic products of Creasey is the method of the instant claims 19 and 20. Creasey, paragraphs [0003] and [0004] are noted regarding inhibiting bacterial/microbial growth in fillers and plastics containing them.
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 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