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 .
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent No. 11248089 and U.S. Patent No.11970577.
USP11248089 claims a polyaniline having specified thermal stability and molecular weight properties including weight average, number average, z-average and peak average molecular wights and molecular wight distribution with dependent claims further limiting the molecular weight ranges , the polyaniline structure, the counterion and film properties.
USP11970577 claims a polyaniline having a specified molecular weight properties, including weight average, number average, z-average and peak average molecular wights and molecular wight distribution with dependent claims further limiting the molecular weight ranges , the polyaniline structure, the counterion and film properties.
The present independent claims 1 and 11 are directed to a method of preparing a polyaniline in a flow reactor and to a polyaniline having specified molecular weight properties and limitations regarding the structure.
Although the conflicting claims are not identical, they are not patentably distinct from each other because each of the claims contain dependent claims which, when read as a whole, contain the same subject matter that overlaps with the presently claimed polyaniline and its properties. The presently claimed method of preparing the polyaniline and the presently claimed composition would have been obvious in view of the inventions in the related patents.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference application. However, the reference application teaches all of the claimed ingredients and amounts, and a substantially similar process.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Allowable Subject Matter over the Art of Record
The following is an Examiner's statement of reasons for the indication of allowable subject matter:
Applicant(s) claimed invention is directed to:
A method, comprising introducing an emulsion of an aqueous solution of an aniline and an organic solvent solution of an alkyl-substituted aryl sulfonic acid comprising 1 wt% or less of hydrocarbon content into a flow reactor, the flow reactor comprising a length of tubing having an inner diameter; and polymerizing the monomer within the tube to form a polyaniline.
The crux of the invention lies in the discovery that preparing polyaniline using a tubular flow reactor and a specifically low hydrocarbon sulfonic acid solution produces a polyaniline having controlled molecular properties while avoiding the problems commonly associated therewith. Such has neither been anticipated by nor made obvious from the prior art. The closest art of record, USP20140008582 and USP20100041865 do not teach or suggest the claimed invention. USP20140008582 is directed to preparing polyaniline and controlling its molecular weight. It uses conventional batch polymerization techniques. The flow rate disclosed therein relates to the GPC testing. USP 20100041865 is also directed to preparing polyaniline including the use of an acid and an organic solvent system during polymerization. However, it uses a stirred double jacketed batch reactor where the materials are added and mixed over time. It differs for the present claims in that it does not use the tubular flow reactor. Moreover neither reference discloses the use of 1wt% or less hydrocarbon sulfonic acid solution. Thus, the art of record demonstrates other methods used in the art which do not, however, result in the same product or contain the advantages as mentioned and neither avoid the problems as mentioned above.
Any comments considered necessary by applicant must be submitted no later
than the payment of the Issue Fee and, to avoid processing delays, should
preferably accompany the Issue Fee. Such submissions should be clearly
labeled "Comments on Statement of Reasons for Allowance."
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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, Heidi Kelley can be reached at 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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/Terressa Boykin/Primary Examiner, Art Unit 1765
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