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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 36-46 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4, 6-13, of prior U.S. Patent No. USP 11,827,003. This is a statutory double patenting rejection.
Claims 36-46 and 52-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 7, 8, 14, 15, 16, 17, 18, 19, 25, 26, 27, 28, 29, 30, and 32-35 of USP 10,800,136.
Claims 36-46 and 52-55 differ from claims 1, 2, 6-8, 14-19, 25-30, and 32-35 in that the independent claims of ‘136 recite the specific dimension ranges of the outer region cells and the inner region cells. However, the articles as claimed are in-part defined by – and allowance determined by – their method of making including the pressure and time of saturation. The starting materials are the same. As such, it follows, that the given the same treatment conditions the final product will be the same that being the dimensions of the outer region and inner region cells. Therefore, while the claims of the instant disclosure do not recite the specific dimensions, the claims are not patentably distinct because the dimensions will be inherently the same.
Claims 52-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 4 of U.S. Patent No. 11,827,003.
Although the claims at issue are not identical, they are not patentably distinct from each other because while the claim 1 of ‘003 recites the “at least 60% by weight of a polylactic acid”, Claim 52 of the instant Application recites any amount of polylactic acid which would includes values 0-100% and overlaps with the range of Claim 1 from ‘003. There does not appear to be any criticality to the amount of 60% and above.
With respect to Claim 55, Claim 1 of ‘003 recites a time period of less than 15 minutes which fully encompasses the range recited in instant Claim 55 of a “predetermined time period is less than 10 minutes”. There is no criticality or unexpected results associated with the amount of time being specifically less than 10 minutes versus the claimed range of less than 15 minutes in Claim 55 of the instant application. As such, non-statutory double patenting exists among the claims.
Allowable Subject Matter
Claims 36-55 are allowable over the prior art. Statutory and non-statutory double patenting rejections remain outstanding.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLISON FITZSIMMONS whose telephone number is (571)270-1767. The examiner can normally be reached M-F 9:30 am - 2:00 pm.
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, Benjamin Lebron can be reached at (571)272-0475. 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.
ALLISON FITZSIMMONS
Primary Examiner
Art Unit 1773
/ALLISON G FITZSIMMONS/Primary Examiner, Art Unit 1773
Prosecution Insights