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 .
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 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.
Claims 1-10, 12-15, 19-24 are pending. Applicant’s previous election of Group I, clear species and methylene dicyclohexyl diisocynate species, claims 1, 7-10, 12-15 still applies and claims 2-6, 19-24 remain withdrawn.
Response to Amendment
Applicant’s amendment of 08/19/26 has been entered. Applicant's amendment has necessitated new grounds of rejection and the remarks are not persuasive.
Claim Rejections - 35 USC § 112(a)/first paragraph
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) claims 1, 7-10, 12-15 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for certain embodiments, does not reasonably provide enablement for the full claimed scope. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to arrive at the invention in a manner commensurate in scope with the claims.
Upon review of the disclosure in its entirety, one having ordinary skill in the art would not be enabled to make the full scope of the invention as claimed without undue experimentation. Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all embodiments within the scope of the claim can be made and/or used as claimed and whether the claim meets the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988).
Claim 1 recites properties that are enabled in the present disclosure only by blending the claimed TPU with an additional polymer, not by the claimed TPU alone (whereas all the claimed properties other than the Elastic Recovery test appear to be enabled in scope from just the claimed TPU). The Elastic Recovery test of claim 1 has a narrower set of enabling examples that require the claimed TPU to be blended with either: a softer TPU (i.e., Estane 60D), or a PVB, or a copolyester polyether polymer. This requirement of an additional polymer to achieve the Elastic Recovery test is recited in much broader terms (compared to the narrowed set of examples) that would constitute an undue/unreasonable amount of experimentation for one of ordinary skill in the art (to experiment within the full claim scope, beyond the scope of the examples, to arrive at the claimed properties). To make the claimed scope commensurate with the enabling disclosure:
a combination of first and second polyurethanes with different soft segment percentages would have to be recited, along with a range of amounts for the second polyurethane with respect to the above TPU,
the inclusion of a polyvinyl acetal would have to be recited, with a range for the PVOH% and MW of the polyvinyl acetal, along with a range of amounts for the polyvinyl acetal with respect to the above TPU, and/or
the inclusion of a copolyester polyether polymer would have to be recited, with the reactants that form the copolyester polyether polymer, along with a range of amounts for the copolyester polyether polymer with respect to the above TPU.
Upon applying the Wands factors to claim 1, undue experimentation would be required:
(A) The breadth of the claims; (as explained above, the claims are broad in terms of the type and amount of second polymer relative to the much narrower guidance provided in the specification)
(B) The nature of the invention; (C) The state of the prior art; (D) The level of one of ordinary skill; (the properties as claimed would not be readily arrived at by one having ordinary skill in the art without significant guidance)
(E) The level of predictability in the art; (to achieve the full scope of the claimed invention with the limited guidance provided in the specification would require testing various types and amounts of second polymers without any apparent predictability)
(F) The amount of direction provided by the inventor; (G) The existence of working examples; and (the direction in the specification, at best, is sufficient for certain types and amounts of second polymers, see e.g., the examples, without any corresponding direction provided for achieving the claimed properties with the broader types and amounts of polymers as claimed)
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. (based on the broader claimed scope compared to the limited guidance in the specification and the apparent lack of predictability, the quantity of experimentation would be unreasonable).
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and fail to resolve the above enablement problem.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
Claim(s) 1-10, 12-15, 19-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, 4-7, 10-24, 31-35 of copending Application No. 18/686,030 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims. The presently claimed amounts are not a patentable distinction See MPEP 2144.05 II A.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-10, 12-15, 19-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-31 of copending Application No. 18/686,013 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-10, 12-15, 19-24 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-24 of copending Application No. 18/686,038 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-10, 12-15, 19-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-15, 21-32 of copending Application No. 18/686,005 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim(s) 1-10, 12-15, 19-24, is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-31 of copending Application No. 18/686,024 (the copending application). Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims only appear to differ in their dependency and by reciting additional limitations not recited in the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection which were necessitated by Applicant's amendment. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant’s amendment has obviated the scope of enablement rejection with respect to the heat relaxation test and the properties of claims 7-10 but not for the elastic recovery test of claim 1. Applicant argues there is no undue experimentation required to achieve this property because one having ordinary skill in the art would know how to achieve the claimed property by adjusting TPU characteristics. This is not persuasive because there is no indication in the disclosure as to how to achieve the elastic recovery test property with a single TPU as claimed. As explained in the rejection, only the examples with a second polymer (which is not claimed) achieve the claimed elastic recovery property, while the examples with just the claimed TPU (of which multiple different single TPU are tested) fail to achieve this property. There does not appear to be anything routine or predictable about achieving this property with just a single TPU as claimed and/or with a generic additional polymer (i.e., broader than the scope of second polymers suggested in the rejection above). The polymer limitations suggested in the rejection define a level of experimentation (broader than the present examples) that is reasonable for one of ordinary skill in the art to achieve the claimed property. Without such limitations, one having ordinary skill in the art would have to experiment with all possible permutations of the claimed TPU (of which there do not appear to be any embodiments capable of achieving the claimed elastic recovery property with a single TPU) or would have to combine the claimed TPU with a second polymer and experiment with all possible types of second polymer (of which there are countless embodiments) to determine which enable/achieve the claimed elastic recovery property. The scope of enablement rejection is therefore maintained.
The 112 2nd and prior art rejections are withdrawn due to Applicant’s amendment.
The double patenting rejection based on 18/686,010 is withdrawn but the rest are maintained. Although the presently claimed scope has been narrowed, it is still overlapped by the cited copending applications’ claims, and the recitation of additional aspects in the copending application that are not required in this present application do not negate the double patenting rejections because the claimed scope of the copending applications still falls within the scope of the present application (unless and until the present claims preclude the additional aspects recited in the other applications). Thus, the double patenting rejections are maintained.
Conclusion
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 extension fee 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 date of this final action.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights