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 .
Election/Restrictions
Applicant's election with traverse of species A(i): an aminoalkyl; B(i): silica particles; C(ii): a multi-lobal shape; D(ii): the first and second high density polyethylene particles forming a porous structure with a bimodal pore size distribution; and E(i): a non-planar and non-tubular shape, in the reply filed on 11/24/2025 is acknowledged. The traversal is on the ground(s) that examination of all species in the same application would not be overburdensome. This is not found persuasive because of the following reasons.
(a) the species require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(b) the prior art applicable to one species would not likely be applicable to another species.
Applicant further asserts that claim 1 encompasses two or more different embodiments in view of the “mixtures thereof”. Thus, the species restriction is improper because the asserted “species” do not refer to the different embodiments of the invention as stated by MPEP 806.04(e). This is not found persuasive.
Claim 1 is designated a generic claim. However, nothing in the species restriction is specific about a species including a mixture of at least two of components: an aminoalkyl compound, a mercaptoalkyl compound and a thiourea. Applicant is required to elect a single species for prosecution on the merits to which the claims shall be restricted of no generic claim is finally held to be allowable.
Where two or more species are claimed, a requirement for restriction to a single species is proper if the species are mutually exclusive (MPEP 806.04(f)). Claims 3 and 4 recite an aminoalkyl compound, but not a mercaptoalkyl compound and a thiourea while claims 5 and 6 recite the mercaptoalkyl compound, but not the aminoalkyl compound and the thiourea. Similarly, claim 7 recites the thiourea, but not the aminoalkyl compound and the mercaptoalkyl compound.
The requirement is still deemed proper and is therefore made FINAL.
Accordingly, claims 1-4, 8-11, 13, 14, 16-18, and 20 are under consideration. Claims 5-7, 12, 15 and 19 have been withdrawn from consideration as being directed to non-elected species.
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 14 and 16 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.
It is unclear which particles refer to the first high density polyethylene particles. Does Applicant want to convey that the at least one type of high density polyethylene particles are first high density polyethylene particles?
Claim Rejections - 35 USC § 102
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 –
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 2, 4, 8, 11, 13, 14, 16-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0048741 to Prince et al. (hereinafter “Prince”).
As to claims 1 and 20, Prince discloses a filtration media comprising functionalized particles distributed throughout a sintered porous matrix which is formed from a combination of three different types of ultra-high molecular weight polyethylene particles (abstract).
The first ultra-high molecular weight polyethylene particles have an average molecular weight ranging from 8 million g/mol to 10 million g/mol (paragraph 38).
The second ultra-high molecular weight polyethylene particles have an average molecular weight ranging from 4 million g/mol to 5.5 million g/mol, and a bulk density of 0.25g/cc or less (paragraph 40). The second ultra-high molecular weight polyethylene particles read on the claimed at least one type high density polyethylene polymer particles.
The third ultra-high molecular weight polyethylene particle has a bulk density less than or equal to 0.33 g/cc (paragraph 42).
The functionalized particles comprise a silica carrier and a scavenger component immobilized on the silica carrier. The functionalized particles include 2-aminoethyl sulfide ethyl silica (SEA), 2-Mercaptoethyl ethyl sulfide silica (SEM26) (paragraph 135).
The filtration media exhibits a complex internal matrix comprising millions of interconnected, multi-directional pores of varying diameters forming a tortuous path obstacle to the through flow of contaminants in fluids (paragraph 155).
As to claims 2 and 4, the functionalized particles comprise a silica carrier and a scavenger component immobilized on the silica carrier. The functionalized particles include 2-aminoethyl sulfide ethyl silica (SEA), 2-Mercaptoethyl ethyl sulfide silica (SEM26) (paragraph 135).
As to claim 8, the second ultra-high molecular weight polyethylene particles have an average molecular weight ranging from 4 million g/mol to 5.5 million g/mol, and a bulk density of 0.25 g/cc or less (paragraph 40).
As to claim 11, the second ultra-high molecular weight polyethylene particles have an average particle size D50 of 28 to 36 microns which is less than 50 microns (paragraph 116).
As to claim 13, the second ultra-high molecular weight polyethylene particles comprise a plurality of non-spherical perforated or porous particles having a second convoluted shape which is described as a popcorn-like morphology (paragraph 111). The second ultra-high molecular weight polyethylene particles thus have a multi-lobal shape.
As to claim 14, the first, second and third ultra-high molecular weight polyethylene particles have different average particle size D50 (paragraph 116; table 2).
As to claim 16, Prince also discloses a filtration media comprising functionalized particles distributed throughout a sintered porous matrix which is formed from a combination of two different types of ultra-high molecular weight polyethylene particles having different average particle sizes d50 (paragraph 118). The first ultra-high molecular weight polyethylene particles have d50 from 50 to 70 microns while the first ultra-high molecular weight polyethylene particles have d50 from 28 to 36 microns (paragraph 116). Difference in the average particle sizes d50 results in the filtration media having a bimodal pore size distribution.
As to claim 17, the functional particles are contained in the filtration media in an amount greater than about 20% by weight (table 2).
As to claim 18, the filtration media is in the form of a block segment having an outer diameter of about 1.45 inches and an inner diameter of about 0.368 inches and a length of 2.3 inches (paragraph 167). The filtration media thus has a non-planar and non-tubular shape.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Prince as applied to claim 1 above, and further in view of US 2019/0212257 to Wang et al. (hereinafter “Wang”).
Prince discloses the functionalized particles comprising a silica carrier and a scavenger component immobilized on the silica carrier. The functionalized particles include 2-aminoethyl sulfide ethyl silica (SEA), 2-Mercaptoethyl ethyl sulfide silica (SEM26) (paragraph 135).
Prince fails to disclose the functionalized particles comprising pentaamine ethyl sulfide amide silica (SPA5).
Wang, however, discloses a method of detecting one or more metals in a liquid sample. The method includes the step of extracting the metal from the liquid sample and retaining the metal on a binding material (abstract). The binding material comprises SPA5, SEA, or SEM26 (paragraph 13).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute SPA5 for SEA as chemical scavengers because SPA5 and SEA film have been shown in the art to be recognized equivalent chemical scavengers for removal of metals from the liquid samples and the selection of these known equivalents to be used as chemical scavengers for removal of metals from the liquid samples will be within the level of the ordinary skill in the art.
Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Prince.
Prince does not explicitly disclose a filtration media having an average pore size of greater than about 4.5 nm and a BET surface area of greater than about 0.5 m2/g. However, it appears that the filtration media of Prince is structurally and chemically the same as the porous substrate of the claimed invention.
The filtration media comprises functionalized particles distributed throughout a sintered porous matrix which is formed from a combination of three different types of ultra-high molecular weight polyethylene particles (abstract).
The first ultra-high molecular weight polyethylene particles have an average molecular weight ranging from 8 million g/mol to 10 million g/mol (paragraph 38).
The second ultra-high molecular weight polyethylene particles have an average molecular weight ranging from 4 million g/mol to 5.5 million g/mol, and a bulk density of 0.25g/cc or less (paragraph 40). The second ultra-high molecular weight polyethylene particles have an average particle size D50 of 28 to 36 microns which is less than 50 microns (paragraph 116). The second ultra-high molecular weight polyethylene particles comprise a plurality of non-spherical perforated or porous particles having a second convoluted shape which is described as a popcorn-like morphology (paragraph 111). The second ultra-high molecular weight polyethylene particles thus have a multi-lobal shape.
The third ultra-high molecular weight polyethylene particle has a bulk density less than or equal to 0.33 g/cc (paragraph 42).
The first, second and third ultra-high molecular weight polyethylene particles have different average particle size D50 (paragraph 116; table 2).
The functionalized particles comprise a silica carrier and a scavenger component immobilized on the silica carrier. The functionalized particles include 2-aminoethyl sulfide ethyl silica (SEA), 2-Mercaptoethyl ethyl sulfide silica (SEM26) (paragraph 135).
The filtration media exhibits a complex internal matrix comprising millions of interconnected, multi-directional pores of varying diameters forming a tortuous path obstacle to the through flow of contaminants in fluids (paragraph 155). The functional particles are contained in the filtration media in an amount greater than about 20% by weight (table 2).
Therefore, the examiner takes the position that the average pore size of greater than 4.5 nm and the BET surface area of greater than about 0.5 m2/g would be inherently present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
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, 2, 8-11, 13, 14, 16-18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/500,405 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the present invention are fully encompassed by those of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/500,405 (reference application) as applied to claim 1 above, in view of Wang.
The reference application discloses that a chemical scavenger comprises scavenger component immobilized on a solid carrier wherein the chemical component is an aminoalkyl compound while the solid carrier is a silica particle (claims 9-12).
The claims of the reference application do not explicitly disclose the chemical scavenger comprising SPA5 or SEA.
Wang, however, discloses a method of detecting one or more metals in a liquid sample. The method includes the step of extracting the metal from the liquid sample and retaining the metal on a binding material (abstract). The binding material comprises SPA5, SEA, or SEM26 (paragraph 13).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use SPA5 or SEA disclosed in Wang for the chemical scavenger disclosed in the reference application, motivated by the desire to promote extraction of metals from the liquid samples.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788