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 .
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 1-16 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,252,603 in view of Buchanan et al. (WO-2012/141904-A1).
Regarding claims 1, 6, 9-12 and 14-15
Buchanan discloses a stretched film of a regioselectively-substituted. cellulose (i.e., compound with plurality of hydroxyl substituents) propionate (i.e., saturated C1-6 alkyl-CO-substituent) benzoate (i.e., C6 aromatic-CO-substituent) having a degree of substitution of propionate (DSOH) of 1.91 and a degree of substitution of benzoate (DSB₂) of 0.62; therefore, DSOH = 0.47. The benzoate is primarily located on C2 and C3. The degree of substitution of benzoate on C2 (C2DSB₂) is approximately equal to the degree of substitution of benzoate on C3 (C3DSB₂), and each of them is approximately two times the degree of substitution of benzoate on C6 (C6DSB₂), as evident from the peaks of figure 5. Therefore, C2DSB₂ = C3DSB₂ = 0.24 and C6DSB₂ = 0.12.
Buchanan fails to disclose the use of 30 wt % or less of component A. However, the ‘603 patent discloses similar cellulose ester films and discloses the use of 30 wt % or less of compound A (claim 1). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Buchanan by including 30 wt % or less of component A, with a reasonable expectation of success, as suggested by the ‘603 patent.
Regarding claim 2
Buchanan discloses stretching at a temperature between 160 to 200 C (para 0064).
Regarding claim 3
The Re and the Rth are properties of the composition, and When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claims 4-5
The ratio of Re(450 nm)/Re(550 nm) is a property of the composition, and When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 7
The ‘603 patent discloses these compounds (claim 7).
Regarding claim 13
The ‘603 patent discloses that the aryl moiety can be naphthoyl (claim 9).
Regarding claim 16
The ‘603 patent discloses a plurality of a second C1-20 alkyl-CO-substituent (claim 11).
Regarding claim 19
Buchanan discloses stretching in the machine direction (para 0064).
Regarding claim 20
The ‘603 patent discloses that the slow axis is in the film plane, making it within 180 degrees of the machine direction (para 0031).
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 17/760,452 in view of Buchanan et al. (WO-2012/141904-A1).
This is a provisional nonstatutory double patenting rejection.
Regarding claim 1
Buchanan discloses a stretched film of a regioselectively-substituted. cellulose (i.e., compound with plurality of hydroxyl substituents) propionate (i.e., saturated C1-6 alkyl-CO-substituent) benzoate (i.e., C6 aromatic-CO-substituent) having a degree of substitution of propionate (DSOH) of 1.91 and a degree of substitution of benzoate (DSB₂) of 0.62; therefore, DSOH = 0.47. The benzoate is primarily located on C2 and C3. The degree of substitution of benzoate on C2 (C2DSB₂) is approximately equal to the degree of substitution of benzoate on C3 (C3DSB₂), and each of them is approximately two times the degree of substitution of benzoate on C6 (C6DSB₂), as evident from the peaks of figure 5. Therefore, C2DSB₂ = C3DSB₂ = 0.24 and C6DSB₂ = 0.12.
Buchanan fails to disclose the use of 30 wt % or less of component A. However, the ‘452 application discloses similar cellulose ester films and discloses the use of 30 wt % or less of compound A (claim 1). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Buchanan by including 30 wt % or less of component A, with a reasonable expectation of success, as suggested by the ‘452 application.
Allowable Subject Matter
Claims 17-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art fairly teaches or suggest the limitations of these claims in combination with the limitations of the base claim(s) from which they depend.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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, Jonathan Johnson can be reached at 5712721177. 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.
JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
Prosecution Insights