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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 16-27, in the reply filed on 7/13/26 is acknowledged.
Claims 28-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/13/26.
Claim Rejections - 35 USC § 112
Claims 16-27 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.
Regarding claims 16-27, claim 16 recites the limitation "the strand drop height" in the last line. There is insufficient antecedent basis for this limitation in the claim. Furthermore, the specification does not provide clear guidance on how “strand drop height” is calculated, and the claim does not specify this, i.e. where does one measure the start and end of “strand drop height” is not clearly defined.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 17-18 and 21-27 each recite a broad recitation, and the claims also recite the language “preferably” / “most preferably” followed by the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 16-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Berti et al (US 7,087,139), with/without evidence from Corleto et al (US 2007/0120285) or Yokoyama et al (US 2008/0260979).
Regarding claim 16, Berti teaches a devolatilization system for removing volatiles from polymer melt feed (title, abstract), Berti teaches the system comprises devolatilization nozzle 240/270 with inlet part headers 205, outlet part comprising a number of apertures that form polymer strands 250/275, collector 220/225 in chambers 210/215, polymer outlets 265/290 and gas outlets 260/280 (see Fig 2/3, C3:L31-C5:L5), Berti teaches a range of total number of nozzles with a range of total number of apertures that is changed whether or not the unit is plant scale or smaller scale (C4:L9-61, aperture diameters taught are substantially overlapping with instantly claimed aperture ranges), Berti teaches the polymer passes through nozzles 240/270 through apertures and then falls into collectors 220/225 (See C4:L30-38, C4:L62-67).
However Berti is silent to the average distance between apertures and the strand drop height in the ranges as claimed.
However Berti as set forth above teaches the general conditions of selecting a number of apertures, and therefore this would necessarily set the spacing between apertures, as well as there existing a strand drop height, because Berti has taught the polymers falls, however has not specifically optimized these ranges, however “ "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)” see MPEP 2144.05, therefore the skilled artisan would be expected to find through routine constructional design choice, and scaling up or down the system of Berti the optimum ranges without unexpected results.
Regarding claims 17-18, the ranges taught are expected to be found through routine optimization through the general conditions of the prior art as set forth above, “ "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)” see MPEP 2144.05.
Regarding claim 19, a triangular grid layout was one of several notoriously well-known layouts of nozzles in a nozzle system, see Corleto Fig 3, [0025].
Regarding claim 20, selecting tapered nozzles was a well known choice for holes/apertures (see Yokoyama [0164]).
Regarding claims 21-27, the ranges taught are expected to be found through routine optimization through the general conditions of the prior art as set forth above, “ "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)” see MPEP 2144.05 and are related to material acted upon by the apparatus which is not given significant weight, see MPEP 2115.
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.
Claim 16-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 30 of copending Application No. 18/572,456 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to devolatilization apparatus with features of dependent claims of the instant application incorporated into independent form for sizing of the system which are obvious modifications to PHOSITA motivated to find optimum workable conditions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gordon (US 3,853,672) teaches a polymer devolatilization system. Hagberg (US 3,966,538) teaches a polymer devolatilization system. Tomlinson (US 10,085,794) teaches a polymer devolatilization system.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN MILLER whose telephone number is (571)270-1603. The examiner can normally be reached Monday - Friday 9 - 5.
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/JONATHAN MILLER/Primary Examiner, Art Unit 1772
