CTNF 18/493,021 CTNF 85837 DETAILED ACTION Double Patenting 08-33 AIA 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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/356907 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because copending application ‘907 recites a polylactic acid foam sheet having a bulk density of 0.063 g/cm 3 to 0.250 g/cm 3 (claim 4) and having a crystallinity degree of 7.5% or less (claim 1). While 18/356907 does not expressly recite the melt viscosity of the foamed polylactic acid sheet, because the polylactic acid sheet has the same density and crystallinity a the instantly claimed foam, evidence is provided that the foam sheet is the same as that of the instantly claimed sheet, as they are made from identical materials and have the same crystallinity and bulk density, meaning the foamed sheet of 18/356907 will necessarily have the same properties as the instantly claimed foam, including the melt viscosity and foam diameter recited in the instant claims. The burden is shifted to Applicant to provide factually supported objective evidence demonstrating the contrary. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-4, 6, 9, and 11-13 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Kumai et al. (US 2022/0162415) . Kumai et al. teach a foamed polylactic acid sheet comprising a polylactic acid resin composition (abstract and ¶21). The bulk density of the foamed sheet is 0.063 g/cm 3 or greater but 0.125 g/cm 3 or less (abstract). The composition further comprises a filler (¶21) in an amount of from 3% by mass or less (¶52). The amount of filler used in the Examples (see Table 2) falls within the range of instant claim 9. The average cell diameter of the sheet is preferably 100µm or less which falls within the range of instant claim 3. Kumai et al. teaches using carbon dioxide as a compressive fluid and a foaming agent, which is dispersed into the atmosphere (i.e. “purged”) just after production from the foam. See ¶73. The polylactic acid resin composition is produced by a kneading step and a foaming step. Kumai et al. teaches melt-mixing a polylactic acid resin and filler at a temperature at or above the melting point of the resin, adding a compressive fluid to the melted resin and kneading (¶130-132 and ¶134-136). The foaming step is a step including removing (i.e. purging) the compressive fluid to foam the composition. See ¶139. The compressive fluid is exchanged with air in the atmosphere to remove the compressive fluid. This meets the purging step of instant claim 11. This also results in expansion of the resin and formation of a foamed sheet. See ¶140-141. In an example of producing the foam sheet, the filler is used in an amount of 0.5% by mass, which falls within the range of instant claim 9. The foamed polylactic acid resin sheets of Kumai et al. have a crystallinity degree which falls within the ranges (35% or less in instant claim 1 and 30% or less in instant claim 2) of instant claims 1-2 and 11. See at least Example 10 in Table 2. The foamed polylactic acid resin sheets of Kumai et al. have bulk density which falls within the range of instant claims 1 and 11 (See at least Example 10 of Table 2 of Kumai). The foamed polylactic acid resin sheets of Kumai et al. have a cell diameter (median) which falls within the range of instant claims 3 (see at least Example 10 of Table 2). The foamed polylactic acid resin sheets of Kumai et al. have a thickness which falls within the range of instant claim 10 (see Example 5 of Table 2). Kumai does not expressly recite whether the foams are closed-cell or open cell foams. Thus, one of ordinary skill in the art would at once envisage either closed-cell or open-cell foams, closed-cell foams of which necessarily have 50% or more closed cells. This meets instant claim 4. The foamed sheets of Kumai are molded to produce molded products, which meets instant claims 12-13. See ¶98. Kumai et al. do not expressly recite the melt viscosity of the foam sheets produced in the disclosure of the invention. However, Kumai teaches identical amounts of identical materials combined in an identical method to produce an identical product, i.e. a foam sheet, the foam sheet of which has a crystallinity, bulk density and cell diameter which are the same as that recited in the instant claims. Evidence is therefore provided that the foam sheets of Kumai are identical to that of the instantly claimed foam sheets, meaning the foams will necessarily have the same properties of the instantly claimed foams, including the melt viscosity recited in instant claims 1 and 11 and the closed cell content of instant claim 4. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada , 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). The burden is shifted to Applicant to provide factually supported objective evidence that the foams of Kumai et al. do not have the melt viscosity recited in the instant claims . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kumai et al. (US 2022/0162415) . Kumai et al. teaches the polylactic acid, method, and product as discussed in this action above, the discussion of which is incorporated herein by reference. Kumai et al. teaches that the filler has a particle size of 100 nm or less (0.1 µm or less) (see ¶51). This overlaps the range of instant claim 8. The thickness of the foam sheet of Kumai et al. is preferably 0.1 mm or greater than 10 mm or less (¶83). This overlaps the range of instant claim 10. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris , 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson , 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff , 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari , 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). It would have been obvious to one of ordinary skill in the art, based on the teachings of Kumai et al. to use a filler which has a size meeting instant claim 8 and to produce a sheet having a thickness which meets instant claim 10 because “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art…” Merck & Co. v. Biocraft Laboratories , 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2123 . 07-21-aia AIA Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kumai et al. (US 2022/0162415) and further in view of Hashida et al. (US 2022/0162377) . Kumai et al. teaches the polylactic acid, method, and product as discussed in this action above, the discussion of which is incorporated herein by reference. Kumai does not expressly recite that the polylactic acid has an optical purity of less than 99%. However, Hashida et al. teach a foam sheet including a polylactic acid having an optical purity of low optical purity, such as 94 to 98% (¶29-30). Both Kumai and Hashida et al. relate to the field of polylactic acid resin sheets and molded products produced therefrom. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to use a polylactic acid having an optical purity of 94-98% as disclosed in Hashida in the invention of Kumai in order to provide a foam sheet which maintains its shape at high temperature because of thermal insulation, due to a high expansion ratio and closed cell structure, uniform structure due to uniform fine cells, and shape retention at high temperatures due to robustness of the skeleton . 07-21-aia AIA Claim 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kumai et al. (US 2022/0162415) and further in view Nemoto et al. (US 2022/0220279) . Kumai et al. teaches the polylactic acid, method, and product as discussed in this action above, the discussion of which is incorporated herein by reference. Kumai does not expressly recite that the filler is mica. However, Nemoto et al. teach foamed polylactic acid resin (abstract) sheets (¶97) produced using polylactic acid resin composition comprising polylactic acid and a filler, which are combined with a compressive fluid (¶94). The polylactic acid resin composition comprises a filler, with expressly named examples being talc, mica, and silica (¶51-53), wherein the filler has a particle size of 1 to 10 microns, which falls within the range of instant claim 8. In view of Nemoto et al.’s recognition that talc, calcium carbonate, and potassium titanate (disclosed in Kumai) is equivalent and interchangeable with mica as a reinforcement filler for foamed polylactic acid resin sheets, it would have been obvious to one of ordinary skill in the art to substitute the talc, calcium carbonate, or potassium titanate (disclosed in Kumai) with mica (disclosed in Nemoto) and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). It will be additionally made of note that mica is a known nucleating agent for polylactic acid foam sheets, as evidenced by JP 5527489B1. Alternatively, it would have been obvious to one of ordinary skill in the art at the time the instant invention was made to include mica as disclosed in Nemoto in addition to the filler of Kumai in order to provide a reinforcing filler, which would provide additional strength properties to the sheets of Kumai et al. See ¶53 of Nemoto . 07-21-aia AIA Claim 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kumai et al. (US 2022/0162415) and further in view JP 5527489B1. Because JP 5527489B2 is not in English, the machine-translated English equivalent is cited below and is attached . Kumai et al. teaches the polylactic acid, method, and product as discussed in this action above, the discussion of which is incorporated herein by reference. Kumai does not expressly recite that the filler is mica. However, JP ‘489B2 teaches a resin composition for producing molded products (abstract). Examples of molded products include sheets (page 12 of the attached translation). The resin composition is a polylactic acid resin composition (see entire document and page 2 of the attached translation). The compositions of JP ‘489B2 include a nucleating agent, with expressly named examples being talc, kaolin, calcium carbonate, silica, alumina, magnesium oxide, titanium oxide, boron nitride, carbon black, graphite, zinc oxide and mica. See page 7 of the attached translation. The nucleating agents have a particle diameter of from 0.1 microns or more (preferably) to 5 microns or less (see page 8, first full paragraph of the attached translation). In view of JP 55287489B2’s recognition that talc, kaolin, calcium carbonate, silica, alumina, magnesium oxide, titanium oxide, boron nitride, carbon black, graphite, and zinc oxide (disclosed in Kumai et al.) are equivalent and interchangeable with mica as a nucleating agent for polylactic acid resin sheets, it would have been obvious to one of ordinary skill in the art to substitute the talc, kaolin, calcium carbonate, silica, alumina, magnesium oxide, titanium oxide, boron nitride, carbon black, graphite, or zinc oxide (disclosed in Kumai) with mica (disclosed in JP ‘489B2) and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). It would have been obvious to one of ordinary skill in the art to use the particle size disclosed in JP ‘489B2 in the invention of Kumai in order to provide both improved dispersibility as well as improved impact resistance and heat resistance. See page 8 of the attached translation. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday. 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, Randy Gulakowski can be reached at (571) 272-1302. 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. /K. BOYLE/Primary Examiner, Art Unit 1766 Application/Control Number: 18/493,021 Page 2 Art Unit: 1766 Application/Control Number: 18/493,021 Page 3 Art Unit: 1766 Application/Control Number: 18/493,021 Page 4 Art Unit: 1766 Application/Control Number: 18/493,021 Page 5 Art Unit: 1766 Application/Control Number: 18/493,021 Page 6 Art Unit: 1766 Application/Control Number: 18/493,021 Page 7 Art Unit: 1766 Application/Control Number: 18/493,021 Page 8 Art Unit: 1766 Application/Control Number: 18/493,021 Page 10 Art Unit: 1766 Application/Control Number: 18/493,021 Page 11 Art Unit: 1766 Application/Control Number: 18/493,021 Page 12 Art Unit: 1766
Prosecution Insights