Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Newly submitted claims 24 and 25 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The currently examined invention and that of newly submitted claims 24-25 are related as mutually exclusive species in an intermediate-final product relationship with the intermediate being useful as a fully reacted ethylenic interpolymer and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 24-25 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that the invention of Group I. was elected in the reply filed on 2/19/2025, and at the time was treated as a de facto election, without traverse, of the remaining pending claims at the time that were directed towards uncrosslinked, crosslinkable, polyurethane, thermoplastic polymer compositions.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 4-19, 26 and 27 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Wilson et al.(2006/0036045).
Wilson et al. discloses thermoplastic, polyurethane polymer compositions having carbon-carbon double-bond crosslinkable sites spaced along their polymer chain as claimed that are formed from polyurethane forming materials meeting the requirements of the claims {see paras [0051]-[0087]}. Owing to the closeness of the material make-ups of the preparations formed, it is held that the uncrosslinked, thermoplastic, polyurethane polymer materials of Wilson et al. inherently possess the crosslinking capabilities referred to by the recitations of applicants’ claims. Regarding claim 5, 16 and 20, porogens, blowing agents, nanotubes and other additives are all disclosed, which provide porosity to the degree required by the claims and/or render products that may be considered fibrous to any degree that may be required by these claims (para [0056]). Regarding claim 6, 11 and 12, the compositions of Wilson et al. are employed in various uses and formation into moldings, planks and spheres, with parallel and/or non-parallel edges are a most readily envisioned shape for a provided article of the instant concern. Regarding claims 7 and 12, distinction is not seen evident in the make-up of the polymer composition as claimed based on the manner, including extrusion and/or molding, in which it is presented. Regarding claims 8, 10, 13, 15, 17 and 19, these claims are further defining of capability features of the claims and do not further limit the claims as defined in any patentable sense. Regarding claim 9, 14 and 18, monomers as claimed are disclosed by Wilson et al. (see paras [0075]-[0083]. Regarding new claims 26 and 27, owing to the closeness of the material make-ups involved it is held that the compositions of Wilson et al. are capable of being molded and/or extruded, particularly, given appropriate conditions.
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 4-19, 26 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 8,883,871. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose crosslinkable polymer compositions that differ in material make-up, including arrangement and selection of crosslinkable groups and monomer selections for material make-up, in a manner which would have been obvious to one having ordinary skill in the art.
Claims 4-19, 26 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10,494,470. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose crosslinkable polymer compositions that differ in material make-up, including arrangement and selection of crosslinkable groups and monomer selections for material make-up, in a manner which would have been obvious to one having ordinary skill in the art.
Claims 4-19, 26 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,530,291. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose crosslinkable polymer compositions that differ in material make-up, including arrangement and selection of crosslinkable groups and monomer selections for material make-up, in a manner which would have been obvious to one having ordinary skill in the art.
Claims 4-19, 26 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,958,932. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose crosslinkable polymer compositions that differ in material make-up, including arrangement and selection of crosslinkable groups and monomer selections for material make-up, in a manner which would have been obvious to one having ordinary skill in the art.
Response to Arguments
Applicants’ arguments have been considered. However, rejections are maintained for all of the reasons as set forth above.
It is the compositional make-ups of the materials involved that determine the make-up of the products of the instant concern. It is held and maintained that the evidence of record is sufficient in the establishment that the cited prior art meets the compositional requirements of applicants’ claims. Accordingly, burden is rightly shifted to applicants to demonstrate, in a fact based manner, difference evident between the products defined by the claims, supported by a fact based demonstration of difference based on compositional make-ups that may be evident. Currently, based on the preponderant evidence of record, such a distinction is not seen to be evident in fact.
Furthermore, in regards to the preponderant evidence of record in support of the position of anticipation, paragraph [0051] and claim 7 of Wilson et al. makes clear that an embodiment of their invention is the making of a composition thermoset through the crosslinking of a linear polymer of their disclosure. Wilson et al. is not fairly taken in a vacuum as only disclosing the products that it ultimately forms. Its fully considered anticipatory disclosures also include products prior to complete work-up. Again, it is held and maintained that is the compositional make-ups of the materials involved that determine the make-up of the products of the instant concern and the evidence of record is sufficient in the establishment that the cited prior art meets the compositional requirements of applicants’ claims. Owing to the closeness of the material make-ups of the compositions of the instant concern, it is held and maintained that the compositions of Wilson et al., prior to further work-ups that may occur, including the compositions referred to at para [0051] which comprises linear polymer material with crosslink sites, defined by reactive functional groups, regularly spaced along the polymer chain, inherently meet the requirements of applicants’ claims.
Regarding arguments concerning claim 10, new claims 26 and 27 and any other claim that may be applicable, it is held regarding the capability language of these claims that it has long been held that the recitation that an element is capable of performing a function is not a positive limitation but only requires the ability to so perform. Stating that the composition is "capable of” performing a function does not constitute a limitation in any patentable sense. In re Hutchison, 69 USPQ 138. It is seen that arrangement of the composition and the materials constituting its make-up would implicitly realize a composition that is capable of performing the function referred to by the recitations of these claims.
Regarding the rejections under the Double Patenting heading, in response to applicant’s request to hold in abeyance 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.”
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/JOHN M COONEY/Primary Examiner, Art Unit 1765