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 .
Specification
The disclosure is objected to because of the following informalities: in paragraph 37, a hyp.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1,
Claim 1 requires at least one hydroxyacid, an optional carboxylic acid, and at least one polyfunctional reactant which consists of a grouping of options. However, it is unclear what of the following text is intended to be included in this list. Firstly, the clauses that end in semicolons are then followed by the word “and”, which often implies the end of a list and does not imply optionality. Additionally, the clause beginning with “mixtures comprising at least one polyol comprising at least three hydroxyl groups and being from carboxylic acid group, polyol (H), and at least one alcohol…” does not end in a semicolon with the following clause beginning with an “and” similarly implies that the chain extending agent in the final clause is not a separate component and is instead included with the previous clause and thus only a required component of the previous option. This confusion persists with the language of claim 9, which appears to imply that the polymer of claim 1 is not intended to have a chain extending agent, a component that is added as part of claim 9 in which the resulting compound is referred to as a polymer (CEHAP) as opposed to the term HAP as used in claim 1. This language does not support that the polymer of claim 1 contains a chain extender based upon the terms used. Also the formatting of the claim does not agree with the punctuation and clauses, which results in difficulty in determining which groups are intended to be part of the grouping of polyfunctional reactants or are instead intended to be separate components of the composition that are not part of this list and finally whether the chain extender is intended to be a required component in all compositions of claim 1 or simply in one option. Taken together, it cannot be determined which of the listed components are intended to be required in all compositions of claim 1 and which are intended to be included as options for the polyfunctional reactant, which renders the claim to be indefinite.
Further, claim 1 is also considered to be indefinite as it is possible to combine what appear to be components of i and iii in which a branched polymer does not result, as could be the case when utilizing a compound containing at least one epoxy functional group and what may or may not be a required chain extending component with an average functionality of 2. While this composition meets the component requirements, it would not result in a polymer that is branched and is therefore not meeting the limitation of branching but is nonetheless allowed based upon the component listing, which would thus render the claim to be indefinite.
Regarding Claim 9,
Claim 9 as mentioned above refers to a chain extended polymer (CEHAP) to which a chain extender has been added. However, one interpretation of claim 1 would imply that the chain extender is required in spite of the terminology implying that this is not the case, which results in claim 9 being indefinite as it is not possible to determine whether claim 9 required a second chain extender to be used in addition to what is required in claim 1 and if so, whether the listed amount is for the additional chain extender or the combination of the two required chain extender portions.
The examiner has attempted to indicate all instances in which indefiniteness arises from the current claim language, however other issues of indefiniteness not listed here may occur depending upon the applicant’s intended separation between optional and required components. As a result, the applicant is required to review the claim language and revise accordingly to clearly indicate the required components and which are intended to be part of a grouping of components that are to be selected from. For the purposes of examination, all groups following iii in the claim are considered to be separate options with the exception of the chain extending agent, which can be interpreted to either be a requirement of the previous group, a stand-alone option, or a required component.
Claims 2-8 and 10-19 are rejected based upon their dependency upon Claim 1.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 states that “The composition according to claim 1 wherein polymer (HAP) is obtained from the polycondensation reaction of a monomer mixture comprising glycolic acid; optionally at least one hydroxy acid (A)…”, which would indicate that glycolic acid is an additional component not included in claim 1 and that component A is optional, which would result in claim 4 not importing all of the limitations from a claim upon which it depends as component A is required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 8-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Nurmi (US 20180201724).
Regarding Claims 1, 8, and 9,
Nurmi teaches a polyester polymer (Abstract) in which the polymer is a polyglycolic acid (Paragraph 8) which optionally can include dicarboxylic acids (Paragraph 50) and in which none of the listed acids includes hydroxyl functionality (Paragraph 84).
With regard to the components meeting the requirements of iii, Nurmi teaches that the polymer can contain comonomers that include three, four, or five alcohol functionalities (Paragraph 49) which can be used in combination with a dicarboxylic acid (Paragraph 50), meeting the requirements for component H and O. Nurmi further teaches that multiple hydroxy-terminated monomers, including diols, can be used (Paragraph 49), which meets the requirement of component AO. Finally, Nurmi teaches that the molecular weight can be increased through the use of compounds such as bisepoxy compounds (Paragraph 106), meeting the requirement of component CE. Because Nurmi teaches that this component is used to increase the molecular weight of the polymer, one of ordinary skill in the art would recognize that the amount of this component would be dependent upon the desired molecular weight of the final polymer. As such, while Nurmi does not teach an incorporation range, it would have been obvious prior to the effective filing date of the instant application to have used this component in any amount that afforded the desired molecular weight polymer.
Regarding Claims 2 and 3,
Nurmi teaches compositions that meet the requirements of the instant claim as discussed above in relation to claim 1. Nurmi further teaches that the difunctional compounds listed previously can be replaced with equivalents with three or more similar or dissimilar functionalities (Paragraph 85). Based upon this teaching, the ordinarily skilled artisan would recognize that triacids can be used. Component C, while optional, is taught by Nurmi as noted above in regard to claim 1. Nurmi further teaches that monomers other than glycolic acid are preferred to be present in a ratio of 300:1 or less relative to glycolic acid (Paragraph 48), which would be 0.003% and thus overlap with the range of the instant claim. It would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 4 and 5,
Nurmi teaches the composition as required as described above in regard to claims 1 and 3. Nurmi further teaches that aromatic derivatives of the comonomers can be aromatic or aliphatic (Paragraph 84). Nurmi also teaches that the comonomer, typically hydroxy terminated, comprises 0.1 to 20 mol%, but is further preferred to be less than 5% (Paragraph 47), overlapping with the range of the instant claim. Nurmi teaches that amount of this component has an effect on the molecular weight of the polymer, with increasing amounts resulting in lower molecular weights (Paragraph 82) and as such, the ordinarily skilled artisan would be motivated to adjust the amount used in order to obtain the desired molecular weight. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
With regard to other hydroxyacids, this component is optional, though Nurmi teaches they can be incorporated in amounts preferred to be less than 10% relative to the glycolic acid (Paragraph 76), which overlaps with the range of the instant claim. Nurmi teaches this component can be used to adjust the polymer properties (Paragraph 72) and as such, one of ordinary skill in the art would utilize it in amounts that achieve the desired property modification. It would therefore have been obvious to have used any amount of another hydroxyacid that afforded the desired changes to material properties.
Regarding Claim 6,
Nurmi teaches that bisepoxy compounds such as polymeric glycidyl ethers and bisphenol A diglycidyl ether can be used (Paragraph 108).
Regarding Claims 10-12,
The amount of chain extending agent is discussed above in regard to claim 1. Nurmi teaches that the composition can be generated in an extruder and that multiple segments can be used for the addition of components (Paragraph 111) and in which the prepolymer is fed in as a solid and melted (Paragraph 111), meeting the requirements of the instant claims. While Nurmi does not explicitly state that the chain extension agent is added separately from the other components, because Nurmi states that comonomers can be added in a second stage and that further additives can be added in yet another stage (Paragraph 111), one of ordinary skill in the art would recognize that not all components must be added in the first stage. Further, altering the sequence of adding ingredients has been held to be prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930). See MPEP 2144.04.IV.C.
Regarding Claims 13-15 and 17-19,
Nurmi teaches that the composition is useful in the generation of films, sheets, and moulded articles (Paragraph 117), which read upon a film, a structural component for an electronic application, and a bottle, meeting the requirements of the instant claims.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Nurmi (US 20180201724) as applied to claims 1-6, 8-15, and 17-19 above, and further in view of Chen (Journal of Applied Polymer Science (2021), volume 138, 50551, Nonpatent Literature Document #4 from IDS dated 2/23/2024).
Regarding Claim 7,
Nurmi teaches a composition meeting the requirements of claim 1 as previously discussed above. While Nurmi teaches the use of chain extending agents, including polymeric chain extending agents (Paragraph 106), Nurmi does not teach that these agents are polymerization products of epoxy-functionalized acrylic monomers and at least a styrenic or acrylic monomer. Chen teaches that styrene-acrylonitrile-glycidyl methacrylate terpolymers can be used as chain extenders for polyglycolic acid polymers (Page 2, Section 2.1 Materials paragraph) and notes that it results in melt strength more like that of unmodified polyglycolic acid than an isocyanate chain extended variant (Page 3, Section 3.1, right column, second paragraph). One of ordinary skill in the art would recognize that because Nurmi teaches the use of isocyanates as chain extending agents such as hexamethylene diisocyanate (Paragraph 107) which are noted to be used in the same capacity by Chen (Page 2, Introduction section, left column, first paragraph) that glycidyl methacrylate-styrene copolymers could be used in place of chain extending agents such as isocyanates and would be motivated to do so when similar melt strength to the polyglycolic acid polymer is necessary. As such, it would have been obvious prior to the effective filing date of the instant application to have substituted the glycidyl methacrylate-styrene copolymer chain extending agent of Chen for the chain extender used by Nurmi to obtain the predictable result of a chain extended polyglycolic acid polymer with improved melt strength with a reasonable expectation of success. It would also have been obvious prior to the effective filing date of the instant application to have used the polymeric chain extender of Chen in place of the chain extender used by Nurmi as these compounds are utilized for the same purpose. See MPEP 2144.06.II.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Nurmi (US 20180201724) as applied to claims 1-6, 8-15, and 17-19 above, and further in view of Wautier (US 20120027973).
Regarding Claim 16,
The composition of Claim 16 represents an unselected option of claim 1 and is rejected on this basis. Additionally, while Nurmi teaches a variety of comonomers to be used in a polyglycolic acid copolymer as described above in regard to claim 1, Nurmi does not teach the use of epoxy-containing compounds not used as chain extenders. Wautier teaches hydroxyacid polymers (Abstract) that can be copolymerized with trifunctional alcohols, trifunctional acids, and the like (Paragraph 17) and additionally teaches that these monomers can be replaced with monomers such as glycidyloxypropyltrimethoxysilane (Paragraph 15) or bisphenol A diglycidyl ether (Paragraph 16). Because Nurmi teaches the use of polyfunctional alcohols and acids as described above in regard to claim 1, it would have been obvious prior to the effective filing date of the instant application to have substituted the epoxysilane used by Wautier for the polyfunctional acids and alcohols taught by Nurmi as these monomers are utilized for the same purpose. See MPEP 2144.06.II.
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, 13, and 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12,384,878. Although the claims at issue are not identical, they are not patentably distinct from each other because under one possible interpretation of claim 1, the epoxy-containing chain extending agent is not required. As a result, the selection of mixtures of polyacid O and polyol H or polyol H and alcohol AO (options a and b of the reference application claim 1) contains monomers incorporated into a glycolic acid polymer in overlapping amounts to those of the instant application as listed in the instant application claims 1 and 13 and are used as downhole tool members, which are listed uses of claim 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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