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 .
Applicant’s election without traverse of Group I, claims 1-19 in the reply filed on 5/7/26 is acknowledged.
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.
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Claims 1-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/647,086 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims a thermoplastic elastomer filament having a lobed structure, (see claim 16 of ‘086) wherein the polymers have the claimed properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 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.
Claim(s) 1-9, 13, 16-17, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH0586508A in view of DuPont Hytrel 5526 data sheet, hereinafter Hytrel.
JP ‘508 discloses an elastomeric monofilament having a plurality of projections or lobes comprising a hard and soft segment. The polymer is spun and drawn to form a monofilament having 3-5 lobes. See abstract. The polymer making up the monofilament comprising a polyether ester polymer including hard and soft segments. See paragraphs 0001-0002 , paragraph 0006. The hard segments of the polymer are made from polyester such as polyethylene terephthalate and polybutylene terephthalate while the soft segments are made from linear polyalkylene glycol such as polyethylene glycol, polytetramethylene glycol, have a molecular weight of 500-5000. The ratio of hard to soft segment is 2/8 to 6/4. The copolymerization amount is 5mol% or less. See paragraph 0006. Considering a translation of the tables, the filaments have a denier of about 210, an elastic recovery of 82-83% at 200% elongation and 94-96% at 100 elongation, a tenacity of 1.2-1.35 g/d and elongation of greater than 300%.
JP ‘508 differs from the claimed invention because it does not clearly disclose the properties as measured by ASTM , the Shore D hardness, or melt temperatures, or shrinkage However, with regard to the properties as measured by ASTM, since the properties as measured in JP ‘508 meet the limitations for the actual values and the same material is used, there is at least a reasonable basis for expecting that the properties as measured by ASTM would also meet the claimed values, since JP ‘508 employs the same types of material to form a lobed monofilament. Additionally, Hytrel teaches polyether esters having melt temperatures, shore D hardness, etc as claimed. Therefore, there is a reason to expect that the polyether esters of JP ‘508 would have properties as claimed or else to have used well known and conventional commercially available polyetherester polymers as the polyetherester of JP ‘508.
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘508 in view of Hytrel as applied to claims above, and further in view of KR970062090A.
JP ‘508 does not clearly teach a convex curve or the lobes or the connection at the cusp.
However, KR ‘090 discloses an extruded elastomeric polyetherester filament having lobes with U-shaped channels between the lobes. See abstract. The U-shaped channel is equated with a convex curve and the connection of the lobes at the cusp.
Therefore, it would have been obvious to have selected an appropriate shape for the channel and connection of the lobes as taught by KR ‘090 in view of its art recognized suitability as a shape for extruded multilobal polyether ester monofilaments.
Claim(s) 10-12, 14, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP ‘508 in view of Hytrel as applied to claims above, and further in view of Figuly et al, , U.S. Patent Application Publication No. 2003/0186051.
JP ‘508 discloses a monofilament as set forth above. JP ‘508 does not clearly teach the particularly claimed modified polymeric glycols, adding a finish of silicone oil or that the core of the monofilament can be hollow.
However, Figuly discloses filaments comprising polyether ester elastomers. Figuly teaches suitable polymeric glycols can include those modified by an aromatic dicarboxylic acid such as those claimed in claim 11. See paragraph 0049. Figuly teaches that the filaments can comprise a finish which can comprise silicone oil which would presumably coat the entire surface area. See paragraph 0077. Figuly teaches that the core of the elastomeric filament can be solid or hollow. See paragraph 0046.
Therefore, it would have been obvious to have employed the particular modified polymeric glycols, to have employed a hollow or solid core and to have included a silicone oil finish as taught by Figuly in view of their art recognized suitability for the purpose of forming polyether ester elastomeric filaments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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/ELIZABETH M IMANI/ Primary Examiner, Art Unit 1789
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