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 § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 and 35 U.S.C. 103 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.
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO2018/207940 to Nishino et al. For the purposes of examination, citations for Nishino are taken from the English translation equivalent of the document EP3636675.
Regarding Claim(s) 1-3 and 7-9, Nishino teaches a copolymer containing a chloroprene monomer units and unsaturated nitrile monomer unit [0086] wherein the unsaturated nitrile binding level is 8-20% by mass [0087].
Nishino is silent regarding any H-NMR spectrums, A, B, C, or D peak areas derived from the H-NMR spectrum, peak area ratios, and the formula (C-2A)/B ≤ 2.0/100 wherein these peaks are relevant for claims 1-3 and 7-9.
However, properties of H-NMR spectrums, A, B, C, or D peak areas derived from the H-NMR spectrum, peak area ratios, and the formula (C-2A)/B ≤ 2.0/100 are functions of the copolymer. Nishino teaches the same copolymer comprising a chloroprene monomer units and 8-20% by mass unsaturated nitrile as set forth in the rejection above wherein the copolymer is produced by a substantially identical process. Nishino’s process found in Example 1 has extreme similarities when compared to Applicant’s process found in polymer 1 [Instant specification, [0073]] of adding equal parts of chloroprene monomer and acrylonitrile monomer to a polymerization chamber fitted with a heating/cooling jacket and a stirrer, adding 0.5 parts by mass of diethylxanthogen disulfide, 200 parts by mass of a purified water, 5.00 parts by mass of potassium rosinate, 0.40 parts by mass of sodium hydroxide and 2.0 parts by mass of sodium salt of β-naphthalene sulfonic acid formalin. Next, 0.1 Parts by mass of potassium persulfate was added as a polymerization initiator, and an emulsion polymerization was conducted under a nitrogen flow. Portion-wise addition of the chloroprene monomer was started 20 seconds after polymerization initiation, and, based on the refrigerant calorimetric change for 10 seconds after polymerization initiation, the portion-wise addition flow rate was adjusted by an electromagnetic valve, and thereafter the flow rate was re-adjusted every 10 seconds. At the time point when the polymerization rate to the total quantity of the chloroprene monomer and the acrylonitrile monomer became 50%, phenothiazine as a polymerization inhibitor was added to terminate the polymerization, then by removing the unreacted monomer in the reaction solution under reduced pressure, the chloroprene-acrylonitrile statistical copolymer latex was obtained. Nishino further teaches polymerization of chloroprene and unsaturated nitrile at a temperatures of 0-59°C [0081] wherein instant application teaches the peak ratios are affected by temperature [instant application, 0047 and 0041] wherein ideal temperatures are 0-50°C [instant application 0032].
Therefore, the properties of H-NMR spectrums, A, B, C, or D peak areas derived from the H-NMR spectrum, peak area ratios, and the formula (C-2A)/B ≤ 2.0/100 in the copolymer of Nishino will be the same properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding Claim(s) 4 and 5, Nishino teaches the chloroprene polymer of claim 1, in a rubber composition or a vulcanized molded article containing said rubber composition [abstract].
Regarding Claim(s) 6 and 10-12, Nishino teaches a vulcanized molded article such as a rubber roll [0025] containing a rubber composition [0024] containing a statistical copolymer [0023] containing chloroprene monomer units and unsaturated nitrile monomer units [0086] wherein the unsaturated nitrile binding level is 8-20% by mass [0087].
Nishino is silent regarding any H-NMR spectrums, A, B, C, or D peak areas derived from the H-NMR spectrum, peak area ratios, and the formula (C-2A)/B ≤ 2.0/100 wherein these peaks are relevant for claims 1-3 and 7-9.
However, properties of H-NMR spectrums, A, B, C, or D peak areas derived from the H-NMR spectrum, peak area ratios, and the formula (C-2A)/B ≤ 2.0/100 are functions of the copolymer. Nishino teaches the same copolymer comprising a chloroprene monomer units and 8-20% by mass unsaturated nitrile as set forth in the rejection above wherein the copolymer is produced by a substantially identical process. Nishino’s process found in Example 1 has extreme similarities when compared to Applicant’s process found in polymer 1 [Instant specification, [0073]] of adding equal parts of chloroprene monomer and acrylonitrile monomer to a polymerization chamber fitted with a heating/cooling jacket and a stirrer, adding 0.5 parts by mass of diethylxanthogen disulfide, 200 parts by mass of a purified water, 5.00 parts by mass of potassium rosinate, 0.40 parts by mass of sodium hydroxide and 2.0 parts by mass of sodium salt of β-naphthalene sulfonic acid formalin. Next, 0.1 Parts by mass of potassium persulfate was added as a polymerization initiator, and an emulsion polymerization was conducted under a nitrogen flow. Portion-wise addition of the chloroprene monomer was started 20 seconds after polymerization initiation, and, based on the refrigerant calorimetric change for 10 seconds after polymerization initiation, the portion-wise addition flow rate was adjusted by an electromagnetic valve, and thereafter the flow rate was re-adjusted every 10 seconds. At the time point when the polymerization rate to the total quantity of the chloroprene monomer and the acrylonitrile monomer became 50%, phenothiazine as a polymerization inhibitor was added to terminate the polymerization, then by removing the unreacted monomer in the reaction solution under reduced pressure, the chloroprene-acrylonitrile statistical copolymer latex was obtained. Nishino further teaches polymerization of chloroprene and unsaturated nitrile at a temperatures of 0-59°C [0081] wherein instant application teaches the peak ratios are affected by temperature [instant application, 0047 and 0041] wherein ideal temperatures are 0-50°C [instant application 0032].
Therefore, the properties of H-NMR spectrums, A, B, C, or D peak areas derived from the H-NMR spectrum, peak area ratios, and the formula (C-2A)/B ≤ 2.0/100 in the copolymer of Nishino will be the same properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/274,281 (hereinafter ‘281). Although the claims at issue are not identical, they are not patentably distinct from each other because application 18/274,281 teaches A chloroprene-based polymer, wherein: a1H-NMR spectrum of the chloroprene-based polymer measured in a deuterochloroform solvent has a peak at 5.80 to 6.00 ppm; when an area of the peak at 5.80 to 6.00 ppm is A and an area of a peak at 4.05 to 6.10 ppm is B, A/B is 1.20/100 or less [claim 1] reasonably reading on instant claim 1’s A/B ratio of 0.9/100 to 1.0/100.
Though application 18/274,281 does not specify the chloroprene-based polymer being a copolymer of chloroprene with unsaturated nitrile used in amount of more than 0%wt to 23%wt, Nishino (EP3636675) discloses a copolymer of a chloroprene and an unsaturated nitrile monomer, the content of the unsaturated nitrile is preferably 8-20%mass [Nishino 0087] , produced by emulsion polymerization in the presence of emulsifying/dispersing agent, polymerization initiator, chain transfer agent [0075-0076], wherein Nishino explicitly teaches said copolymer being used for making vulcanized molded bodies including rolls [Nishino 0023-0025].
Since the chloroprene copolymers with nitrile are taught in the art as being used for making vulcanized molded articles including rolls, as shown by Nishino'087, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teaching of Nishino and the application 18/274,281, and to form, or obvious to try to form the copolymer of chloroprene with nitrile as chloroprene-based polymer in the application 18/274,281 and further to use said copolymer for making vulcanized molded articles such as rolls, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Though application 18/274,281 does not specify the formula (C-2A)/B≤2.0/100, 18/274281 in view of Nishino teaches this limitation is inherently present as set forth in the rejection of claim 1 and 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached M-F 9:00-5:00.
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, Arrie Lanee Reuther can be reached on (571) 270-7026. 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.
/DEVIN MITCHELL DARLING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
Prosecution Insights