DETAILED ACTION
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 .
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.
Claims 1-7 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.
The term “highly” in claim 1 is a relative term which renders the claim indefinite. The term “highly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this instance, it is unclear how polar the highly polar polyester must be. Claims 2-7 are further rejected based on their dependence on claim 1.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/756,155 (‘155) and claims 1-7 of copending Application No. 18/545,064 (‘064). Although the claims at issue are not identical, they are not patentably distinct from each other because the molecular weight distribution curve characteristics of the resin taught in 18/756,155 are encompassed by the claim language of the instant application.
Claim 5 of ‘155 and claim 2 of ‘064 are the same as instant claim 2.
Claim 6 of ‘155 and claim 3 of ‘064 are the same as instant claim 3.
Claim 7 of ‘155 and claim 4 of ‘064 are the same as instant claim 4.
Claim 8 of ‘155 and claim 5 of ‘064 are the same as instant claim 5.
Claim 9 of ‘155 and claim 6 of ‘064 are the same as instant claim 6.
Claim 10 of ‘155 and claim 7 of ‘064 are the same as instant claim 7.
Regarding claims 2 and 3 of ‘155, the instant application and ‘064 both use the term “comprising” which includes the crosslinking components of those claims. The specification may be utilized as a dictionary to learn the meaning or extend the term of “comprising” in accordance with MPEP 804.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Cooper (US 20220227994) in view of Ikura (US 20230312883 A1), Tezuka (US 20230272188 A1), and Ishii (JP2017043679A, attached with machine translation).
Regarding claims 1-7, Cooper teaches PLA (which the instant specification confirms is a highly polar polyester), an elastomeric additive such as TPEE (Abstract; p. 8, [0064]), and additives including cellulose fibers (p. 1, [0010]). The PLA may be present in amounts of at least 80 wt% (p. 2, [0015]). The TPEE may be present in amounts up to 15 wt% (p. 2, [0015]). These amounts result in ratios of polyester elastomer to highly polar polyester ranging from 15:80 to 0:100.
Cooper further teaches that the composition may be tailored for flame retardancy applications (p. 14, [0105]). However, Cooper does not specify the flame retardants that may be used, or in what amount, or what amount of cellulose fibers may be used.
In the same field of endeavor, Ikura teaches a composition of thermoplastic resin, cellulose fiber, and organic fiber different from the cellulose fiber (p. 2, [0021]-[0024]). The cellulose fiber may range in length from 10 to 3,000 microns (p. 3, [0039]). Ikura's organic fiber may be polyester (p. 3, [0045]).
A flame retardant may be added in amounts within any range that does not impair the effects of the composition (p. 4, [0065]). The thermoplastic resin (elastomer) may be present in amounts ranging from 39-80 mass%, and the cellulose fiber may be present in amounts ranging from 5-55 mass% (p. 4, [0066], [0068]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Cooper with the cellulose fiber and ingredient amounts of Ikura to arrive at the claimed invention, and to achieve a composition having both high flexural modulus and high impact strength, as taught by Ikura (p. 2, [0026]).
Like Cooper, Ikura does not limit the flame retardant that may be used.
In the same field of endeavor, Tezuka teaches an additive composition of phosphate or phosphazene flame retardants used in conjunction with cellulose nanofibers and two or more polyester resins (p. 8, [0065]; p. 9, [0076]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Cooper in view of Ikura and the additives of Tezuka to arrive at the claimed invention, and to improve the mechanical characteristics and color tone of the composition, as taught by Tezuka (p. 1, [0011]). These prior art ranges overlap all claimed ranges. A prima facie case of obviousness exists where the prior art composition overlaps the prior art range. See MPEP 2144.05.
Cooper teaches that preferred elastomeric additives include a plurality of ester linkages (p. 8, [0066]).
In the same field of endeavor (polyester-based molding compositions), Ishii teaches that ES-A60NX is a polyester-based elastomer having styrene, polybutylene terephthalate, and poly(tetramethylene oxide) glycol comonomers that is suitable for use in molding compositions (p. 9). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the polyester-based elastomer of Ishii for use in the composition of Cooper in view of Ikura and Tezuka to arrive at the claimed invention, and because of the art-recognized suitability for the intended purpose. See MPEP 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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, Rob Jones can be reached at (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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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights