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 .
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No.12,269,784. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite Galleria mellonella as a larva for digesting the plastic.
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 1, 2 and 4-14 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. In claims 1, 2, 4, 5, 12 and 13, the recitation of “such as” renders the scope of the claims vague and indefinite, since it is not clear whether the limitation following this phrase is positively recited, or whether it merely represents examples of the broader genus.
In claim 8, it is indefinite as to what would constitute “PA 6”, PA 6,6, PA 10 and PA 12.
In claim 11, there is no antecedent basis for “said digestion”.
In claims 12-14, it is indefinite as to what step or steps would be involved in the “use of the at least one larva.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
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.
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.
Claim 15 is rejected under 35 U.S.C. 102(a) (2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Caprio et al (US 9,428,426). No distinction is seen between the biomass which would be formed according to the process recited in applicant’s claim 1, and the pre-pupas biomass disclosed at col. 5, line 16 of Caprio et al, since the pre-pupas biomass of Caprio et al is formed by biodegradation of organic waste with larvae. In any event, it would have been obvious to biodegrade plastics according to the process of Caprio et al, since Caprio et al disclose at col. 5, lines 1 and 2 that the process can be applied to a wide range of waste.
Claims 1, 2, 4 and 10-15 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 the article by Ping Zhu et al (“ Biodegradation of plastics from waste electrical and electronic equipment by greater wax moth larvae (Galleria mellonella”). The article by Ping Zhu et al discloses the biodegradation polyurethane by contact with Gallerai mellonella larvae. (See the Abstract and Section 3.3 of the article.) Accordingly the article anticipates claims 1, 2, 4 and 10-15. In any event, it would have been obvious to contact larva of the species Galleria mellonella with polyurethane in the process of Ping Zhu, since Ping Zhu discloses polyurethane as one of the plastics that can be biodegraded by the larva.
Regarding claims 11 and 15, biomass would be formed according to the process of Ping Zhu to ne less extent than in the process recited in applicant’s claim 1.
Claim Rejections - 35 USC § 103
Claims 3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over the article by Ping Zhu as applied to claim 1 above, and further in view of the article by Alexandria M. Elliot(“ Evaluating Bioremediation Potential for Plastic Pollution with Wax Worms, Gallerai mellonella”). It would have been obvious from the article by Alexandria M. Elliot to include other polymers such as polyvinyl chloride or ethylene vinyl acetate in the biodegradation of Ping Zhu et al. One of ordinary skill in the art would have been motivated to do so, since the article by Alexandria M. Elliot discloses the biodegradation of these chemicals with Galleraia mellonella (wax worms), and the process of Ping Zhu et al is broadly directed to the biodegradation of plastics, with polyurethane, polystyrene and acrylonitrile-butadiene-styrene merely being exemplified.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE A LANGEL whose telephone number is (571) 272-1353. The examiner can normally be reached Monday through Friday from 8:15 am to 5:15 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WAYNE A LANGEL/Primary Examiner, Art Unit 1736
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