Detailed Office Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment of Election
2. Applicant’s election of species (I), process for reducing volatiles in a polymer melt feed wherein the polymer is polystyrene, without traverse in the response filed 21 August 2026 is acknowledged.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 16-30 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.
Firstly, the devolatilization apparatus, as claimed throughout the claims, is indefinite and ambiguous with respect to how the nozzle and/or apertures structurally relate to the devolatilization vessel. It is unclear if the nozzle is part of the vessel, within the vessel, or externally connected to or in communication with the vessel. Furthermore, the devolatilization apparatus, as claimed throughout the claims, is indefinite and ambiguous with respect to how the devolatilization vessel structurally relates to the collector. It is unclear if the collector is part of the vessel, within the vessel, or externally connected to the vessel.
Secondly, with respect to claims 16 and 30, the structure of the devolatilization nozzle is ambiguous in terms of the structure and arrangement of the claimed headers, such that it is unclear how the headers serve to further define the nozzle.
Thirdly, with respect to claim 16, it is unclear what physically constitutes a strand drop height, within the context/confines of the apparatus.
Fourthly, with respect to claim 16, in view of the collecting step, it is unclear if the volatiles are collected in the collector or the devolatilization vessel.
Fifthly, with respect to claims 16, 17, and 24, it is unclear what quantitatively constitutes temperature T; since viscosity is extremely dependent on temperature, the temperature value should be specified. Furthermore, the polymer melt feed temperature T constitutes a variable that must be defined.
Sixthly, with respect to claim 16, the language within the last seven lines of the claim, denoted by “the polymer melt viscosity”, “the average throughput per aperture”, “the average aperture diameter”, and “the ratio of strand drop height / average aperture diameter”, lacks antecedent basis.
Seventhly, with respect to claims 17-27, the language (all occurrences) denoted by “preferably”, “more preferably”, and “most preferably” renders the claims indefinite, because it unclear if or to what extent the preferred language modifies or further limits the less preferred language.
Eighthly, with respect to claim 19, “the pressure drop”, lacks antecedence.
Ninthly, with respect to claim 20, it is unclear if “the polymer temperature” corresponds to temperature T of claim 16.
Tenthly, with respect to claim 21, the language, “the pressure in the devolatilization vessel outside the nozzle”, lacks antecedence. Furthermore, it is unclear how to interpret the language in terms of the structural relationship of the nozzle to the vessel.
Lastly, with respect to claims 24, 26, and 27, the language with respect to “the ratio …”, lacks antecedence.
Double Patenting
5. 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.
6. Claims 27, 29, and 30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-19, 21-27, and 29 of copending Application No. 18/572,487 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims is drawn to an apparatus characterized by the same apparatus components configured in the same way and a process of using the apparatus characterized by the same processing steps.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Comment
7. The severity of the indefiniteness issues set forth above preclude further meaningful search and consideration of the prior art.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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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.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
