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 .
Rejections
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 17-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. prior U.S. Patent No. 11879048 McDaniel. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the patented claims differ somewhat in scope, they overlap to the extent that one practicing the instantly claimed inventions would practice the patented inventions and vice versa. “Caulk” of the patented claims is “sealant” of the instant claims because it necessarily seals. The compositions of the patented claims contain the instantly claimed ingredients and instantly claimed amounts and therefore must necessarily and inherently have the same properties as the inventions of the patented claims. See MPEP 2112.
The patented claims do not require the siliconized acrylic polymers of some of the instant claims.
It would have been obvious to one of ordinary skill in the art to use the instantly claimed siliconized acrylic polymers of some of the instant claims in the patented claims because the instant specification, paragraph [0060] shows such sealant compositions to be commercially available and the properties obtained in these commercially available compositions would have been expected plus the benefits of the lipase of the patented claims.
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 17-36 are rejected under 35 U.S.C. 103 as being unpatentable over the commercially available sealants of the instant specification, paragraph [0060], and paragraph [0058] of the parent application in view of US Pat. Application Publication No. 2010/0233146 McDaniel.
The sealants of the instant specification, paragraph [0060], are taken to be representative of the prior art sealants which contain the instantly claimed acrylic polymer, including siliconized acrylic polymer, filler/pigment, petroleum distillate, and glycol and the instantly claimed sealant solids contents. It would appear that the properties of the instant claims are inherent to the sealant ingredients and not affected by the lipase. It is therefore taken that the instantly claimed properties of the instant claims 17, 18, 19, 31, and 36 are inherent to the commercially available compositions of the instant application, paragraph [0060] which appear to be prior art according to MPEP 2152.02(c) and/or 2152.02(d) and/or 2152.02(e). See MPEP 2112 for the inherency requirements.
It appears that the disclosed, commercially available compositions contain all of the composition limitations of the instant claims 17-36 and property limitations except for the presence of the instantly claimed lipases.
These commercially available compositions are not seen as containing the instantly claimed lipases.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to add the instantly claimed lipases of all of the instant claims to the above discussed commercially available sealants because McDaniel discloses adding lipases, including those of the instant claims (at paragraphs [1330], [1332], [1335], [1337], [1374], [1381], [0627], [0628], [0629], [1341], and Table 17, noting the phospholipases) to compositions which are necessarily sealants because they necessarily seal and which include ingredient combinations and ingredient amounts of the instant claims at paragraphs [0030], [0031], [0875], [0894], [0903], [0956], [0957], [0958], [0961], and [0995], and such compositions would have been expected to have the properties of the commercially available compositions disclosed by the applicant combined with the properties that the lipases of McDaniel give to the compositions of McDaniel, including the properties explicitly disclosed by McDaniel and the properties inherent to the acrylic compositions of McDaniel containing the lipases of McDaniel.
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 to Friday 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.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
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