DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
2. Restriction is required under 35 U.S.C. 121 and 372.
3. This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
4. In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-13, drawn to “a thermoformable acrylic article”.
Group II, claims 14-21, drawn to “a method for producing a thermoformed article”.
5. The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons. While there is a technical relationship between the Groups set forth above, this technical relationship does not amount to a special technical feature. The technical features which are common to Groups I and II, such as, “a thermoformable article prepared from a thermoformable composition comprising particular amounts of an acrylic pre-polymerized syrup and a filler having a particular average particle size with or without a comonomer”, are taught by Minghetti (US 5,985,972). Minghetti teaches that these technical features are common and conventional. In particular, Minghetti teaches a thermoformable acrylic article made of a thermoformable composition comprising, for example, 57.20% by weight of syrup of pre-polymerized methyl methacrylate (which is encompassed by the claimed 35-95 wt% of an acrylic pre-polymerized syrup), 2% by weight of butyl acrylate (which is encompassed by the claimed 0-10 wt% of a comonomer), and 39.92 % by weight of aluminum trihydrate having an average particle size of 9 microns (which is encompassed by the claimed 5-65 wt% of a filler having an average particle size of 0.1-50 µm) (Col. 1, lines 20-35, Col. 3, line 10-Col. 4, line 6, Col. 6, line-Col. 7, line 30, and see also abstract and title of Minghetti). Accordingly, since the technical features fail to define a contribution over Minghetti, they fail to constitute a special technical feature and hence there is a lack of unity between the cited claims.
6. During a telephone conversation with Mr. Michael Stephenson on August 11, 2026, a provisional election was made WITHOUT traverse to prosecute the invention of Group I, claims 1-13 (“a thermoformable acrylic article”). Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-21 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
7. The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product claim for that process invention to be rejoined.
8. In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
9. Claims 1, 8, and 13 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to add the term “of” after the claimed phrase “about 35-95 wt%”.
The applicants are also advised to replace the claimed “the thermoformable article” with the new phrase “the thermoformable acrylic article”.
As to Claim 8: The applicants are advised to replace the claimed “Wollastonite”, “Dolomite” and “Perlite” with “wollastonite”, “dolomite”, and “perlite”.
As to Claim 13: As supported at paragraph [0067] of applicants’ published application, i.e., US PG PUB 20240360305, the applicants are advised to replace the claimed phrase “the thermoformable composition forms an article having a Q value ranging from 5 to 25 following thermoforming” with the new phrase “the thermoformable article having a Q value ranging from 5 to 25 following thermoforming”.
Appropriate corrections are required.
Claim Rejections - 35 USC § 103
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.
10. Claims 1-6, 8-11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Minghetti (US 5,985,972) in view of Loberger et al. (US 2004/0128755) and WO 98/177131 (hereinafter referred to as “WO ‘713”).
As to Claims 1-6, 8-11, and 13: Minghetti discloses a thermoformable acrylic article, wherein the article includes sinks (Col. 1, lines 20-35, Col. 2, lines 58-67, and see also abstract and title of Minghetti). The article taught by Minghetti is made of a thermoformable composition comprising, for example, 57.20% by weight of syrup of pre-polymerized methyl methacrylate (which is encompassed by the claimed 35-95 wt% of an acrylic pre-polymerized syrup), 2% by weight of butyl acrylate (which according to present claim 11 corresponds to the claimed comonomer and encompassed by the claimed 0-10 wt% of a comonomer), and 39.92 % by weight of aluminum trihydrate having an average particle size of 9 microns (which according to present claim 8 corresponds to the claimed filler and encompassed by the claimed 5-65 wt% of a filler having an average particle size of 0.1-50 µm) (Col. 3, line 10-Col. 4, line 6 and Col. 6, line-Col. 7, line 30). Minghetti also discloses the addition of conventional ingredients, including pigments, release agent, wetting agent, and an initiator (Col. 3, lines 40-45 and Col. 7, lines 5-15). Minghetti further discloses drying the aluminum hydrate (filler) to eliminate any absorbed moisture (Col. 5, lines 34-39), which corresponds to the claimed filler comprising less than about 1 wt% of moisture (which is interpreted to include zero amount of moisture). Moreover, Minghetti discloses that the syrup has 20-60% by weight of solids (Col. 8, lines 45-50), which overlaps with the claimed 5-40 wt.% of solids. See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, Minghetti does not specify its article including sink as comprising a basin portion and a deck at least partially surrounding the basin portion, wherein the basin portion comprises at least one sidewall, as required by claims 1 and 4 of the present application.
Nevertheless, Loberger et al. disclose the use of a sink having a basin including a pair of sidewalls and a deck surrounding the basin prepared via thermoforming for the purposes of providing improved access to and useability (Paragraphs [0051], [0058], and [0064]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the sink having a basin including sidewalls and a deck surrounding the basin prepared via thermoforming taught by Loberger et al. as the sink article of Minghetti, with a reasonable expectation of successfully providing improved access to and useability.
Additionally, Minghetti does not specify its article having matte finish as required by claim 1. However, WO ‘713 teaches preparing mineral filled acrylic based thermoformed products including sink having a matte finish surface and appearance with improved stain resistant properties (Page 1, lines 1-10 and see also abstract). Thus, it would have been obvious to one of ordinary skill in the art to use the thermoformable composition comprising mineral fillers and acrylic taught by Minghetti to prepare thermoformed products having matte finish surface and appearance for the purposes of obtaining improved stain resistant properties as suggested by WO ‘713.
As to Claims 2-3 and 13: These claimed properties would have naturally followed from the suggestion of Minghetti, Loberger et al. and WO ‘713‘s thermoformable acrylic article since the collective teachings of Minghetti, Loberger et al., and WO ‘713 would have suggested the claimed thermoformable acrylic article for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
11. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Minghetti (US 5,985,972) in view of Loberger et al. (US 2004/0128755) and WO 98/17713 (hereinafter referred to as “WO ‘713”) as applied to claims 1-6, 8-11, and 13 above, and further in view of Birch et al. (US 2002/0001729).
The disclosures with respect to Minghetti, Loberger et al. and WO ‘713 in paragraph 10 are incorporated here by reference.
While Minghetti discloses adding 1-12% by weight of a crosslinking agent to the composition (Col. 3, lines 30-32), which overlaps with the claimed 0.1-1 wt% of a crosslinking agent, they do not specifically mention the addition of a particular amount of a coupling agent as required by claim 12.
Nevertheless, Birch et al. teach preparing thermoformed articles including parts and appliances (Paragraph [0008]). Birch et al. also teach the use of coupling agents to treat fillers to improve the bond between the fillers to the resin (Paragraph [0064]). Birch et al. further teach that the amount of coupling agent used is an amount effective to improve the bond between the fillers and the resin (Paragraph [0064]). In other words, the amount of coupling agent used is a known results-effective variable, i.e., affecting the properties of the product. See MPEP section 2144.05, IIB.
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add an optimum or workable amount of the coupling agent taught by Birch et al., inclusive of those claimed, in the thermoformable article suggested by Minghetti, Loberger et al. and WO ‘713, with a reasonable expectation of successfully improving bond between fillers to the resin.
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.
12. Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 5-10 of U.S. Patent No. 12,435,214 (hereinafter referred to as “the patent”) in view of Loberger et al. (US 2004/0128755).
The claims of the patent and the present application recite articles formed from a thermoformable composition, the thermoformable composition comprising: a) about 35 wt % to about 95 wt % of an acrylic pre-polymerized syrup; b) about 0 wt % to about 10 wt % of a comonomer; and c) about 5 wt % to about 65 wt % of a filler having an average particle size (d50) in a range of about 0.1 μm to about 50 μm, wherein the filler comprises one or more selected from a group consisting of aluminum trihydrate, aluminum monohydrate, magnesium hydroxide, calcium carbonate, magnesium silicate, talc, silica, calcium carbonate, calcium metasilicate, wollastonite, dolomite, perlite, hollow glass spheres, and kaolin. The claims of the patent and the present application also recite that a ratio of filler to acrylic pre-polymerized syrup is in a range of about 0.05 to about 1.9, the acrylic pre-polymerized syrup has a percent by weight of solids (wt %) ranging from 5 wt % to 40 wt %, about 0.0 wt % to about 1.0 wt % of a coupling agent; and about 0.1 to about 1.0 wt % of a crosslinking agent. The claims of the patent and the present application further recite that the filler comprises less than about 1.0 wt % of moisture, the comonomer is a butyl acrylate, the thermoformable composition further comprises one or more selected from a group consisting of wetting/dispersing agent, anti-flocculating agent, pigment, release agent, air release agent, suspension agent, and initiator, and the article has a Q value ranging from 5 to 25. The claim of the patent further recite that the article has a gloss reading of 0-20 units (which overlaps with the gloss readings of less than 15 units and less than 10 units recited in present claims 2 and 3). See MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
However, the claims of the patent do not specify its article as including sink and comprising a basin portion and a deck at least partially surrounding the basin portion, wherein the basin portion comprises at least one sidewall, as required by claims 1 and 4-5 of the present application.
Nevertheless, Loberger et al. disclose the use of a sink having a basin including a pair of sidewalls and a deck surrounding the basin prepared via thermoforming for the purposes of providing improved access to and useability (Paragraphs [0051], [0058], and [0064]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the sink having a basin including sidewalls and a deck surrounding the basin prepared via thermoforming taught by Loberger et al. as the article of the patent, with a reasonable expectation of successfully providing improved access to and useability.
Additionally, since the claims of the patent suggest an article having overlapping gloss units as those presently claimed, the presently claimed matte finish would have naturally followed from the suggestion of the claims of the patent. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Correspondence
13. For record purposes only, it is noted that there are no prior art rejections of present claim 7 at this time.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 02/29/2024.
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