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 .
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 1-7 and 9-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, and 6-10 of copending U.S. Patent Appl. No. 18/832,362 (hereinafter “the ‘362 application”). Although the claims at issue are not identical, they are not patentably distinct from each other. It is noted that although the claims of the ‘362 application recite additional limitations, the claims of the instant application are fully encompassed by the claims of the ‘362 application as detailed below.
Regarding claim 1, claim 1 of the ‘362 application recites all of the limitations recited in claim 1 of the instant application.
Regarding claim 2, claim 1 of the ‘362 application recites all of the limitations recited in claim 2 of the instant application.
Regarding claim 3, claim 2 of the ‘362 application recites all of the limitations recited in claim 3 of the instant application.
Regarding claim 4, claim 4 of the ‘362 application recites all of the limitations recited in claim 4 of the instant application.
Regarding claim 5, claim 6 of the ‘362 application recites all of the limitations recited in claim 5 of the instant application.
Regarding claim 6, claim 7 of the ‘362 application recites all of the limitations recited in claim 6 of the instant application.
Regarding claim 7, claim 9 of the ‘362 application recites all of the limitations recited in claim 7 of the instant application.
Regarding claim 9, claim 10 of the ‘362 application recites all of the limitations recited in claim * of the instant application.
Regarding claim 10, claim 8 of the ‘362 application recites all of the limitations recited in claim 10 of the instant application.
Regarding claim 11, claims 1 and 2 of the ‘362 application recite all of the limitations recited in claim 11 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-11 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the formation of “a crystal” in ll. 9-10. It is unclear whether this is the same as or different from the “cremation crystal” recited in l. 1. For examination purposes it is assumed applicants intended to recite “the cremation crystal.” Dependent claims 2-10 are similarly rejected due to their dependence on claim 1.
Similarly, claim 11 recites the formation of “a transparent crystal” in l. 15. It is unclear whether this is the same as or different from the “cremation crystal” recited in claim 1. For examination purposes it is assumed applicants intended to recite “the cremation crystal.”
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.
(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.
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(s) 1-2 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korean Patent Appl. Publ. No. KR 2012-0128786 A (hereinafter “the KR ‘786 application”).
Regarding claim 1, The KR ‘786 application teaches a method of forming a cremation crystal (see the Abstract, Figs. 1-3, and entire reference which teach a method of forming a cremated crystal), the method comprising:
mixing ashes and a catalyst to form a mixture (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach mixing ashes and a catalyst in the form of liquid phosphoric acid);
drying the mixture to form a dried product (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the mixture is dried at 600 °C through microwave heating);
grinding the dried product to form a ground product (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the dried mixture was ground into pellets by a hammer mill);
performing a heat treatment process to melt the ground product, thereby forming a melted product (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the pellets are heated to 900 °C over 1 hour and then heat treated at 900 °C for 30 min); and
crystallizing the melted product through cooling to form a crystal (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the mixture is naturally cooled to room temperature to form a crystal).
Regarding claim 2, The KR ‘786 application teaches that the catalyst in the mixing of the ashes and the catalyst is phosphoric acid (H3PO4) (see the Detailed Description at p. 3 and Example 2 which teach the use of orthophosphoric acid (H3PO4) as the catalyst).
Regarding claim 8, The KR ‘786 application teaches that in the mixing of the ashes and the catalyst, the catalyst is mixed in an amount of 100 to 200 parts by weight with respect to 100 parts by weight of the ashes (see the Detailed Description at p. 3 and Examples 1-2 at p. 5 which teach that the liquid catalyst may be added in 50 to 200 parts by weight with respect to 100 parts by weight of the ashes).
Regarding claim 9, The KR ‘786 application teaches that the heat treatment process is performed at a temperature of 800°C to 1250°C for 10 minutes to 2 hours to melt the ground product (see Example 2 at p. 5 which teach that the heat treatment is performed at 900 °C for 30 min).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3-7 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over the KR ‘786 application in view of U.S. Patent No. 258,423 to Hughes, et al. (“Hughes”).
Regarding claim 3, the KR ‘786 application does not teach classifying the ashes into raw ashes and ashes for phosphorus extraction; and obtaining the phosphoric acid from the ashes for phosphorus extraction, wherein the phosphoric acid, serving as the catalyst in the mixing of the ashes and the catalyst, is obtained in the obtaining of the phosphoric acid. However, in Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 Hughes teaches a method of producing phosphoric acid from bones by a process which includes cleaning the bones in warm water and hydrochloric acid, calcining the bones by heating in a furnace exposed to the ambient, grinding until finely pulverized, and then mixing with sulfuric acid and water. After being allowed to rest for 24 h the mixture is passed through a filter, is then subject to superheated steam or about 1.5 h, and is filtered through a cloth. After adding chlorate of potassa the mixture is placed in an evenly heated furnace for the process of final evaporation and fusion in order to produce phosphoric acid which is free from organic material and other impurities. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hughes and would recognize that the phosphoric acid utilized as a catalyst in the method of forming a cremation crystal as taught in the KR ‘786 application may also be produced from the ashes themselves and would be motivated to utilize at least a portion of the ashes for this purpose with the motivation for doing so being to reduce the need for the use of an external source of phosphoric acid and thereby increase the efficiency of the process. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Regarding claim 4, the KR ‘786 application teaches that in the mixing of the ashes and the catalyst, a second mixture is formed by mixing the raw ashes and the phosphoric acid (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach mixing ashes and a catalyst in the form of liquid phosphoric acid), but does not teach that the phosphoric acid used is produced from the ashes themselves as claimed. However, as noted supra with respect to the rejection of claim 3, in Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 Hughes teaches a method of producing phosphoric acid from bones which is free from organic material and other impurities. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hughes and would recognize that the phosphoric acid utilized as a catalyst in the method of forming a cremation crystal as taught in the KR ‘786 application may also be produced from the ashes themselves and would be motivated to utilize at least a portion of the ashes to produce phosphoric acid that is then utilized as the catalyst itself with the motivation for doing so being to reduce the need for the use of an external source of phosphoric acid and thereby increase the efficiency of the process.
Regarding claim 5, The KR ‘786 application does not teach the steps of obtaining the phosphoric acid from the ashes. However, as noted supra with respect to the rejection of claims 3-4, in Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 Hughes teaches a method of producing phosphoric acid from bones which is free from organic and other impurities. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hughes and would recognize that the phosphoric acid utilized as a catalyst in the method of forming a cremation crystal as taught in the KR ‘786 application may also be produced from the ashes themselves and would be motivated to utilize at least a portion of the ashes to produce phosphoric acid that is then utilized as the catalyst itself with the motivation for doing so being to reduce the need for the use of an external source of phosphoric acid and thereby increase the efficiency of the process.
The KR ‘786 application and Hughes do not explicitly teach recovering residual ashes remaining after obtaining the phosphoric acid, wherein in the mixing of the ashes and the catalyst, a third mixture is formed by mixing the residual ashes, recovered in the recovering of the residual ashes, and the phosphoric acid, serving as the catalyst. However, when seeking to produce a crystal using the ashes obtained from cremating a loved one, a person of ordinary skill in the art prior to the effective filing date of the invention would recognize the desirability of utilizing all of the ashes, including any residual amount that may be present as a result of producing phosphoric acid in the method of Hughes as a matter of respect to the deceased and their family. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to incorporate any and all residual ashes as part of the step of mixing ashes and the catalyst in the method of the KR ‘786 application for this purpose.
Regarding claim 6, the KR ‘786 application does not teach that the phosphoric acid, serving as the catalyst mixed with the residual ashes in the mixing of the ashes and the catalyst, is obtained in the obtaining of the phosphoric acid. However, as noted supra with respect to the rejection of claim 4, in Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 Hughes teaches a method of producing phosphoric acid from bones which is free from organic material and other impurities. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hughes and would recognize that the phosphoric acid utilized as a catalyst in the method of forming a cremation crystal as taught in the KR ‘786 application may also be produced from the ashes themselves and would be motivated to utilize at least a portion of the ashes to produce phosphoric acid that is then utilized as the catalyst itself with the motivation for doing so being to reduce the need for the use of an external source of phosphoric acid and thereby increase the efficiency of the process.
Regarding claim 7, the KR ‘786 application does not teach the method of obtaining the phosphoric acid as claimed. However, as noted supra with respect to the rejection of claim 3, in Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 Hughes teaches a method of producing phosphoric acid from bones by a process which includes:
reducing phosphorus from the ashes for extraction (see Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 which teach that the bones are cleaned in warm water and hydrochloric acid and the process further includes a step in which heating causes oxygen to leave the potassium chlorate and destroy the organic matter present);
burning the extracted phosphorus to form an oxide through oxidation (see Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 which teach that the bones are calcined or burned in a suitable furnace and the process further includes subjecting the acidulated fluid to superheated steam which also functions to oxidize the mixture); and
hydrating the oxide by reacting with water (H2O) to obtain the phosphoric acid (see Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 which teach that the pulverized bones are added to pure water and sulfuric acid as part of the process of forming phosphoric acid).
Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hughes and would recognize that the phosphoric acid utilized as a catalyst in the method of forming a cremation crystal as taught in the KR ‘786 application may also be produced from the ashes themselves using a process which involves the reducing, burning, and hydrating steps as claimed and would be motivated to utilize at least a portion of the ashes for this purpose with the motivation for doing so being to reduce the need for the use of an external source of phosphoric acid and thereby increase the efficiency of the process. It is noted that even if the order of performing steps in the method of Hughes is not exactly the same, absent a showing of unexpected results, changing the order such that, for example, the bones are ground or formed into ashes prior to rather than after the reduction step is considered as prima facie obvious. It has previously been held that selection of any order of performing steps is prima facie obvious in the absence of a new and unexpected results. In re Burnhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946).
Regarding claim 10, The KR ‘786 application teaches that an amount of phosphorus remaining in the residual ashes is controlled to adjust a color and transparency of the ultimately formed cremation crystal (See the Detailed Description section at p. 3 which teach that the crystal composition and, consequently, the color and transparency of the ultimately formed crystal may be controlled by the type of inorganic solvent used as well as the its concentration relative to the amount of ashes added or through the addition of trace amounts of inorganic pigments. Accordingly, a person of ordinary skill in the art prior to the effective filing date of the invention would be motivated to control the color of the resulting crystal by adjusting the relative concentration of the different types of ashes that are added from each and all sources in order to produce a crystal having the desired color).
Regarding claim 11, The KR ‘786 application teaches a method of forming a cremation crystal (see the Abstract, Figs. 1-3, and entire reference which teach a method of forming a cremated crystal), the method comprising:
mixing the raw ashes and the phosphoric acid, serving as a catalyst (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach mixing ashes and a catalyst in the form of liquid phosphoric acid),
drying the second mixture to form a dried product (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the mixture is dried at 600 °C through microwave heating);
grinding the dried product to form a ground product (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the dried mixture was ground into pellets by a hammer mill);
performing a heat treatment process to melt the ground product, thereby forming a melted product (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the pellets are heated to 900 °C over 1 hour and then heat treated at 900 °C for 30 min); and
crystallizing the melted product through cooling to form a transparent crystal (see Figs. 1-2, the Detailed Description section at pp. 3-4, and Example 2 at p. 5 which teach that the mixture is naturally cooled to room temperature to form a crystal).
The KR ‘786 application does not teach the steps of classifying ashes into raw ashes and ashes for phosphorus extraction, obtaining phosphoric acid (H3PO4) from the ashes for phosphorus extraction, and using the catalyst obtained in the obtaining of the phosphoric acid to form a second mixture. However, in Figs. 1-2 and p. 1, l. 31 to p. 2, l. 100 Hughes teaches a method of producing phosphoric acid from bones by a process which includes cleaning the bones in warm water and hydrochloric acid, calcining the bones by heating in a furnace exposed to the ambient, grinding until finely pulverized, and then mixing with sulfuric acid and water. After being allowed to rest for 24 h the mixture is passed through a filter, is then subject to superheated steam or about 1.5 h, and is filtered through a cloth. After adding chlorate of potassa the mixture is placed in an evenly heated furnace for the process of final evaporation and fusion in order to produce phosphoric acid which is free from organic material and other impurities. Thus, a person of ordinary skill in the art prior to the effective filing date of the invention would look to the teachings of Hughes and would recognize that the phosphoric acid utilized as a catalyst in the method of forming a cremation crystal as taught in the KR ‘786 application may also be produced from the ashes themselves and would be motivated to utilize at least a portion of the ashes for this purpose with the motivation for doing so being to reduce the need for the use of an external source of phosphoric acid and thereby increase the efficiency of the process. The combination of prior art elements according to known methods to yield predictable results has been held to support a prima facie determination of obviousness. All the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, with the combination yielding nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. 398, __, 82 USPQ2d 1385, 1395 (2007). See also, MPEP 2143(A).
Conclusion
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/KENNETH A BRATLAND JR/Primary Examiner, Art Unit 1714