DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claims 31, 39, and 40 are objected to because of the following informalities:
Claim 31 should be amended to recite a resulting foam formed therefrom; and
for consistency, Claims 39 and 40 should be amended to recite “the non-structural, non-isocyanate foam”.
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 21 – 31 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 because:
Claim 21 sets forth “A two-part non-isocyanate polyurethane foam system:” in the preamble. The metes and bounds of the claim are not clearly defined due to the lack of a transitional phrase at the end of the preamble. For the purposes of further examination, Claim 21 will be interpreted as setting forth “A two-part non-isocyanate polyurethane foam system comprising:”.
Claims 21 and 37 set forth “microspheres and a rheology modifier”. However, Claim 22 sets polymer microspheres themselves are a type of rheology modifier. It is therefore unclear whether the recited rheology modifier encompasses said microspheres or is in addition to said microspheres. For the purposes of further examination, the claims will be interpreted as setting forth a rheology modifier comprising polymer microspheres. Applicant is advised that if Claims 21 and 37 is amended in this manner, Claim s22 and Claim 38 should then be amended to recite the rheology modifier further comprises a clay-based rheology modifier.
Similarly, Claim 32 sets forth “microspheres and 0.1 to 20% of a rheology modifier”. However, Claim 22 sets polymer microspheres themselves are a type of rheology modifier. It is therefore unclear whether the recited rheology modifier encompasses said microspheres or is in addition to said microspheres. For the purposes of further examination, Claim 32 will be interpreted as setting forth 0.1 to 20% by weight of a rheology modifier comprising polymer microspheres.
As Claims 22 – 31, 33 – 36, and 38 – 40 all ultimately depend on Claim 21, 32, or 37, they incorporate the subject matter thereof and are also therefore rejected under this statute.
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 21 – 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 17 of U.S. Patent No. 11,958,955. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
It is clear that all the elements of instant Claims 21 – 40 are to be found in Claims 1 – 17 of U.S. Patent No. 11,958,955, as instant Claims 21 – 40 fully encompass Claims 1 – 17 of U.S. Patent No. 11,958,955. The difference between instant Claims 21 – 40 and Claims 1 – 17 of U.S. Patent No. 11,958,955 lies in the fact that the patent claims include more elements - e.g. that the two-part non-isocyanate polyurethane foam system has reduced harmful vapor emission, the blowing agent has zero ozone depletion potential and/or low global warming potential, and the required presence of microspheres – and are thus more specific. Thus, the invention of Claims 1 – 17 of U.S. Patent No. 11,958,955 is in effect a "species" of the "generic" invention of instant Claims 21 – 40. It has been held that the generic invention is "anticipated" by the "species". See In Re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant Claims 21 – 40 are anticipated by Claims 1 – 17 of U.S. Patent No. 11,958,955, they are not patentably distinct from Claims 1 – 17 of U.S. Patent No. 11,958,955.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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