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 .
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.
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.
Claims 1-3 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ramsden (U.S. 2,965,661).
Ramsden teaches in Example 29 the synthesis of tetravinyl tin which anticipates Claim 1, Claim 2, Claim 3 and Claim 11 as the preamble imparts no additional structure on the claimed compound and is also considered future intended use. There is nothing of record that reasonably suggest the known tetravinyl tin compound is not capable of being used as an additive and/or a crosslinking auxiliary.
Claims 1-5 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones (U.S. 2,985,631).
Jones teaches crosslinking agent compositions comprising tetravinyl tin and tetra allyl silane in 50/50 amounts with respect to each other. See Example XXV table. The allyl group on the silane anticipates an unsaturated group on the crosslinking auxiliary of Claim 4. The 50/50 amount anticipates Claim 5. Tetravinyl tin which anticipates Claim 1, Claim 2, Claim 3 and Claim 11 as the preamble imparts no additional structure on the claimed compound and is also considered future intended use. There is nothing of record that reasonably suggest the known tetravinyl tin compound is not capable of being used as an additive and/or a crosslinking auxiliary.
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.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Sakojiri (U.S. 20110168262) in view of Koch (U.S. 20100269890) and Lei (CN112940376; reference made to included English machine translation).
Sakojiti teaches EVA compositions for solar modules (¶[0003]) which comprise EVA 100 parts, crosslinker (3 parts, TEBC ¶[0074] reads over peroxide of Claim 8 and Claim 9), Crosslinking auxiliary (2 TAIC parts reads over Claim 4 and Claim 6), and silane coupling agent (3-methacryloxypropyl trimethoxy silane (MEMO), 0.5 parts reads over Claim 10). See Table 1.
Sakojiri does not teach or suggest a tetravinylic tin compound such as tetravinyl tin or Formula 1 (which is met with tetravinyl tin).
Sakojiri is directed to crosslinking EVA ¶[0025] for adhesion and durability reasons.
Koch teaches crosslinking of EVA in solar modules increase the heat resistance (i.e. creep resistance) ¶[0004] Therefore, one of ordinary skill in the art is reasonably suggested that changing the crosslink density (or amount of crosslinking) has an effect on the adhesion, durability and heat resistance of the underly EVA.
Lei teaches in ¶[0022] the use of organotin in EVA resins (EVA is one of the resins the organo tin is compounded into) improves the crosslinking degree. Tetravinyl tin is a preferred organo tin ¶[0016] and the amount used is taught as is 0.1 wt% - 0.15 wt% of the total resin added in the example (See ¶[0009] for instance)
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention Sajokiti, in particular that of the Examples of Table 1 discussed above, by adding an organotin as an additive related to improving crosslink density because Koch and Sakojiri suggest the crosslinking density affects the adhesion, durability and heat resistance of EVA and Lei teaches organo tin compounds improve crosslink density in resins such as EVA as discussed above. One of ordinary skill in the art would have been motivated to choose tetravinyl tin as the organo tin as Lei prefers it in ¶[0016]. Further one of ordinary skill in the art would have been motivated to use 0.1 wt% - 0.15of the EVA resin as the tetravinyl tin additive in the composition because Lei also exemplifies this amount.
The above composition of TAIC, TEBC and tetravinyl tin reads over Claim 1, Claim 2, Claim 3, Claim 4 and Claim 6, along with Claim 7-10 for the above reasons and Claim 11 as the tetravinyl tin is an additive in the compositions.
With respect to the compositional amount limitation of Claim 5 and Claim 12, the resulting crosslinking composition is 3 TEBC, 2 TAIC, 0.5 silane and 0.1 tetravinyl tin for a total of 5.6 parts. Scaling up to 100 parts, the amount of tetravinyl tin is 0.1 / 5.6 * 100 = x = 1.7 parts tetravinyl tin which meets the range of this compound in Claim 12. The TEBC (crosslinking agent) is ~ 54 parts which meets the range of said component of Claim 12. The silane coupling agent is 8.9 parts which also meets the limitation of Claim 12.
For Claim 5, the amount of tetravinyl tin : crosslinking auxiliary (TAIC) is 0.1-0.15:2 (or 1-1.5:20) which does not meet range of claim 5.
The exemplified TAIC of Sajokiri is not disclosed well by Sajokiri but it is reasonably suggested to be one of the additional additives broadly taught by Sajokiri in ¶[0030] and included in the teachings of ¶[0034] and amounts of these compounds in ¶[0035] as this is the only other mention of isocyanurate compounds in Sajokiri.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Sajokiri such that the amount of TAIC was between 0.5 and 5 parts by weight per 100 parts by weight of EVA because Sajokiri teaches this range is reasonably suggested to be applicable for this TAIC component as discussed as above.
Considering 0.1 : 0.5 tetravinyl tin:TAIC gives a ratio of 1:5 against the claimed ratio of 1:4 (reduced).
Considering 0.15 : 0.5 tetravinyl tin : TAIC gives a ratio of 1:3.33 which meets the claimed ratio 1:4 to 4:1.
Therefore, the modified amounts of tetravinyl tin and TAIC as discussed above present n overlapping range of the ratio of Claim 4 reading over it.
Absent a showing of criticality, it is well settled that where prior art describes components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See MPEP 2144.05. In re Harris, 409, F3.d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 3d 1379, 1382 (Fed. Cir 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d, 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549,553 (CCPA 1974).
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, 6-14 of copending Application No. 18/285441. Although the claims at issue are not identical, they are not patentably distinct from each other because the comprising language of the instant claims is read over by the copending 18/285441 which contains additional elements for the following reasons.
The preamble in these claims does not impart any structure onto the claims as as-filed specification does not define compositions or additives as any thing reasonably suggested to be different than their plain meanings in the art. Further, these claimed components in a larger composition would also be capable of performing their recited preamble functions as there is no evidence of record to reasonably suggest otherwise.
18/285441 Claim 1 and 18/285441 Claim 14 anticipates instant Claim 1 as it recites the same tetraalkyl tin compound.
18/285441 Claim 8 anticipates instant Claim 2 as it recites the same tetraalkyl tin compound.
18/285441 Claim 9 anticipates instant Claim 3 as it recites tetravinyl tin.
18/285441 Claims 11-13 anticipate instant Claims 4-6 as they recite the same auxiliary agents and ratios.
18/285441 Claim 1 anticipates instant Claim 7 as it recites the same tetraalkyl tin composition.
18/285441 Claim 6 anticipates instant Claim 8 and instant Claim 9 as it recites the same peroxide in the composition.
18/285441 Claim 7 anticipates instant Claim 10 as it recites the same silanes in the composition.
18/285441 Claim 7 anticipates instant Claim 10 as it recites the same silanes in the composition.
18/285441 Claim 1 and 18/285441 Claim 14 anticipates instant Claim 11 as it recites the same tetraalkyl tin compound.
18/285441 Claim 10 anticipates instant Claim 12 as it recites the same compositional limits the composition.
MPEP §804(I)(B)(1)(b)(i) cannot be used to overcome the above provisional rejection in future responses as there is no non-statutory double patenting rejection in the copending case at this time.
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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766
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