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 .
Information Disclosure Statement
Two identical information disclosure statements were filed on 04/26/2024. One IDS was considered by the Examiner and one was not considered by the Examiner.
Claim Rejections - 35 USC § 112(b)
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.
Claim 12 is 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 claim 12, the claim is indefinite for a plurality of reasons including:
a) several species are repeated multiple times (for example Nylons);
b) it is not clear what is meant by “other specialist” sytrenics;
c) it is not clear if “aramids PI aromatic polyamide” is intended to be one species or several;
d) multiple species are followed by one or more parentheses, some of which appear to be abbreviations while others appear alternative species thereof which is inconsistent and unclear and further it is unclear if the text within the parentheses is included in the claim and further limits the subject matter of the claim, or whether it is an aside to the claim and is not further limiting;
e) multiple species recited constitute broad recitations of other species recited and it is noted that 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)) and 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; and
f) the claim appears to contain at least one trademark and it is noted that where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over She (CN 106633294 A; using Clarivate Analytics machine translation for English language citations) in view of Ciuperca (US PGPub 2022/0153641).
Regarding claims 1-5 and 11, She teaches master batch compositions comprising 80-100 parts of a base resin, 20-25 parts of micro-sized pozzolan powder, 10-15 parts calcium oxide, 10-15 parts polystyrene resin, 5-7 parts antibacterial, 10-15 parts curing agent, and 0.8-1.2 parts dispersant (abstract; claims pg6)(where 20-25 parts pozzolan equates to approx. 11.2-18.4 wt%; instant claim 11). She teaches the micro-sized pozzolan powder is preferably a volcanic material (pg2).
She teaches volcanic pozzolan powder that is micron-sized but does not specifically teach hyaloclastite having a particle size of less than or equal to 150 µm (instant claim 1). However, Ciuperea teaches natural pozzolan materials obtained from volcanic sources includes hyaloclastite powder (abstract; [0027]; [0036]; [0039]), basaltic hyaloclastite specifically ([0036])(instant claim 2), and further teaches it is advantageous to use such materials in a sufficiently small particle size in order to obtain desired pozzolanic properties, namely a volume-based mean particle size of less than or equal to 40 µm, preferably less than 5 µm ([0039])(instant claims 1 and 3-5). Ciuperea and She are analogous art and are combinable because they are concerned with the same technical feature, namely compositions comprising micron-sized pozzolanic powders obtained from volcanic sources. At the time of filing a person having ordinary skill in the art would have found it obvious to select the hyaloclastite powder of Ciuperea as the micron-sized volcanic pozzolan powder of She and would have been motivated to do so as She invites volcanic pozzolans of micro-size and further as Ciuperea teaches hyaloclastite of 40 µm or less is an advantageous pozzolan material having pozzolanic properties suitable for use in chemical admixtures ([0039]; [0055]).
Regarding claims 6-8 and 12-13, She in view of Ciuperea render obvious the composition as set forth in claim 1 above. She further teaches the base resin is preferably polyethylene (pg 1; pg2, top)(instant thermoplastic; instant claims 6 and 12-13), and teaches the presence of polystyrene (instant claims 7 and 12). She further teaches in the examples solid gram amounts of the base resin and the polystyrene (instant solid polymer; instant claim 8).
Regarding claims 9-10, She in view of Ciuperea render obvious the composition as set forth in claim 1 above. As the instant products require no more than the blend of polymer and hyaloclastite, the recitations that the product be ‘an insulating board’ (claim 9) or ‘a carpet backing’ (claim 10) are no more than intended use. The recitation that the basic formulation containing said polymeric material and hyaloclastite be used in insulating boards or carpet backing does not confer patentability to the claims since the recitation of an intended use does not impart patentability to otherwise old compounds or compositions (see In re Tuominen, 671 F.2d 1359, 213 USPQ 89 (CCPA 1982)). Furthermore, the recitation of a new intended use for an old product does not make a claim(s) to that product patentable (see In re Schreiber, 44 USPQ 2d 1429, (Fed. Cir. 1997)).
Regarding claims 14-18, She in view of Ciuperea render obvious the composition as set forth in claims 1-5 above, incorporated here by reference. She further teaches methods of obtaining the master batch material comprising combining and mixing the components, extruding and granulating (pg3; examples).
Regarding claims 19-20, She in view of Ciuperea render obvious the method as set forth in claims 14-15 above. She further teaches the base resin is preferably polyethylene (pg 1; pg2, top)(instant thermoplastic; instant claim 19), and teaches the presence of polystyrene (instant claim 20).
Claim 9 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over She (CN 106633294 A; using Clarivate Analytics machine translation for English language citations) in view of Ciuperca (US PGPub 2022/0153641) and further in view of Donnelly et al. (US 3,948,830).
She in view of Ciuperea render obvious the composition as set forth in claim 1 above and She further teaches product uses thereof, namely underground cable protective coatings/barriers (pg2). She does not specifically teach an insulating board. However, Donnelly teaches that pozzolanic filled polymer compositions are suitable for use as coatings for various surfaces including insulating wallboards (col 12 ln 29-37; example 1, col 13 ln 29-25). Donnelly and She are analogous art and are combinable because they are concerned with the same field of endeavor, namely pozzolan filled polymer composition suitable as coatings. At the time of filing a person having ordinary skill in the art would have found it obvious to form a wallboard as taught by Donnelly using the composition of She and would have been motivated to do so as Donnelly teaches wallboards, including insulating wallboards, is a known alternative use of pozzolan filled coating materials.
Claim 10 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over She (CN 106633294 A; using Clarivate Analytics machine translation for English language citations) in view of Ciuperca (US PGPub 2022/0153641) and further in view of Hemmings et al. (US PGPub 2003/0032707).
She in view of Ciuperea render obvious the composition as set forth in claim 1 above and She further teaches product uses thereof, namely underground cable protective coatings/barriers (pg2). She does not specifically teach carpet backings. However, Hemmings teaches that pozzolan fly ash filled polymer composites are suitable for use in a plurality of products including coatings, caulks, dry wall jointing, carpet backing, etc. ([0007]-[0011]; [0017]; [0033]). At the time of filing a person having ordinary skill in the art would have found it obvious to form carpet backings as taught by Hemmings using the compositions of She and would have been motivated to do so as Hemmings teaches carpet backings and coatings are equally suitable end-use applications of pozzolan filled polymer compositions.
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 1-8 and 11-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/612,108 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar compositions comprising the combination of a polymeric material and hyaloclastite having a volume-based mean particle size of less than or equal to 150 µm, and products thereof.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/Primary Examiner, Art Unit 1767
Prosecution Insights