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 .
Claim Objections
Claim 14 is objected to because of the following informalities: “at least one charged” should be “at least one positively charged”. 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 6 and 12 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.
Claim 6 recites the limitation "the anionic surfactant" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination, claim 6 will be interpreted as depending from claim 5.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation 1.0 wt% to 6.0 wt%, and the claim also recites 2.0 wt% to 4.5 wt% or from 2.5 wt% to 3.5 wt% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 12, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth [see MPEP 2173.05(d)].
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298).
Regarding claim 1: Yamana et al. (US ‘298) discloses emulsion polymerization of monomers in the presence of nonionic emulsifiers [4:34-51], wherein monomer (II) containing no fluorine can be methoxypolyethylene glycol (meth)acrylate and an alkyl (meth)acrylate [2:30-38] such as stearyl acrylate [2:39-53]. Yamana et al. (US ‘298) discloses Preparative Example 2 [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2] contains 134 g FA, 37 g StA (stearyl acrylate), 28 g VCl, 3.5g 2EHA (2-hydroxyethyl methacrylate), 1.8 g DAAM, 1.8 g topolene M, 10.3 g HS-220 (polyoxyethylene alkyl phenyl ether nonionic surfactant), 6.2 g LT-221 (polyoxyethylene sorbitan monolaurate nonionic surfactant), 3.5 g LSH, 44 g DPM, 1.2 g APS (ammonium persulfate), and 330g water {corresponding to about: 13.6 t% StA; 4.9 wt% nonionic surfactants (corresponding to about 4 wt%); 0 wt% acid monomers; wt% based without water} [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2].
Yamana et al. (US ‘298) does not specifically disclose Prep. Ex. 2 containing methoxypolyethylene glycol (meth)acrylate. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included methoxypolyethylene glycol (meth)acrylate based on the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Yamana et al. (US ‘298) suggests that the composition can contain methoxypolyethylene glycol (meth)acrylate as the monomer (II) containing no fluorine [2:30-38]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17], wherein Prep. Ex. 2 contains ~ 18 wt% StA, based on 100% of copolymer A; ~ 13.7 wt% StA, based on composition without water [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2]. Yamana et al. (US ‘298) does not specifically disclose about 1.5 wt% to about 3.5 wt% methoxypolyethylene glycol (meth)acrylate in the copolymer. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 4 wt% methoxypolyethylene glycol in the copolymer (corresponding to ~ 2.8 wt% methoxypolyethylene glycol, based on composition without water), as Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Claim(s) 2-4, 8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298), when taken with Matsumura et al. (US 4,696,822).
Regarding claims 2-4, 8 and 10: Yamana et al. (US ‘298) discloses emulsion polymerization of monomers in the presence of nonionic emulsifiers [4:34-51], wherein monomer (II) containing no fluorine can be methoxypolyethylene glycol (meth)acrylate and an alkyl (meth)acrylate [2:30-38] such as stearyl acrylate [2:39-53]. Yamana et al. (US ‘298) discloses Preparative Example 2 [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2] contains 134 g FA, 37 g StA (stearyl acrylate), 28 g VCl, 3.5g 2EHA (2-hydroxyethyl methacrylate), 1.8 g DAAM, 1.8 g topolene M, 10.3 g Nonion HS-220 (polyoxyethylene alkyl phenyl ether nonionic surfactant; HLB of 16.2), 6.2 g Nonion LT-221 (polyoxyethylene sorbitan monolaurate nonionic surfactant; HLB of 16.7), 3.5 g LSH, 44 g DPM, 1.2 g APS (ammonium persulfate), and 330g water {corresponding to about: 13.6 t% StA; 4.9 wt% nonionic surfactants (corresponding to about 4.5 wt%); 0 wt% acid monomers; wt% based without water} [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2].
Yamana et al. (US ‘298) does not specifically disclose Prep. Ex. 2 containing methoxypolyethylene glycol (meth)acrylate. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included methoxypolyethylene glycol (meth)acrylate based on the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Yamana et al. (US ‘298) suggests that the composition can contain methoxypolyethylene glycol (meth)acrylate as the monomer (II) containing no fluorine [2:30-38]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17], wherein Prep. Ex. 2 contains ~ 18 wt% StA, based on 100% of copolymer A; ~ 13.7 wt% StA, based on composition without water [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2]. Yamana et al. (US ‘298) does not specifically disclose about 1 wt% to about 5 wt% methoxypolyethylene glycol (meth)acrylate in the copolymer. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 4 wt% methoxypolyethylene glycol in the copolymer (corresponding to ~ 2.8 wt% methoxypolyethylene glycol, based on composition without water), as Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Matsumura et al. (US ‘822) provides evidence for Nonion HS-220 having a HLB of 16.2 [5:5-6]; Nonion LT-221 having a HLB of 16.7 [5:51-52].
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298) as applied to claim 1 above, when taken with Matsumura et al. (US 4,696,822).
Regarding claim 9: Yamana et al. (US ‘298) discloses the basic claimed resin [as set forth above with respect to claim 1]; wherein Yamana et al. (US ‘298) discloses Nonion HS-220 (polyoxyethylene alkyl phenyl ether nonionic surfactant; HLB of 16.2) and Nonion LT-221 (polyoxyethylene sorbitan monolaurate nonionic surfactant; HLB of 16.7) [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2].
Matsumura et al. (US ‘822) provides evidence for Nonion HS-220 having a HLB of 16.2 [5:5-6]; Nonion LT-221 having a HLB of 16.7 [5:51-52].
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298), when taken with Matsumura et al. (US 4,696,822).
Regarding claim 11: Yamana et al. (US ‘298) discloses emulsion polymerization of monomers in the presence of nonionic emulsifiers [4:34-51], wherein monomer (II) containing no fluorine can be methoxypolyethylene glycol (meth)acrylate and an alkyl (meth)acrylate [2:30-38] such as stearyl acrylate [2:39-53]. Yamana et al. (US ‘298) discloses Preparative Example 2 [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2] contains 134 g FA, 37 g StA (stearyl acrylate), 28 g VCl, 3.5g 2EHA (2-hydroxyethyl methacrylate), 1.8 g DAAM, 1.8 g topolene M, 10.3 g Nonion HS-220 (polyoxyethylene alkyl phenyl ether nonionic surfactant; HLB of 16.2), 6.2 g Nonion LT-221 (polyoxyethylene sorbitan monolaurate nonionic surfactant; HLB of 16.7), 3.5 g LSH, 44 g DPM, 1.2 g APS (ammonium persulfate), and 330g water {corresponding to about: 13.6 t% StA; 4.9 wt% nonionic surfactants (corresponding to about 4.5 wt%); 0 wt% acid monomers; wt% based without water} [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2].
Yamana et al. (US ‘298) does not specifically disclose Prep. Ex. 2 containing methoxypolyethylene glycol (meth)acrylate. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included methoxypolyethylene glycol (meth)acrylate based on the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Yamana et al. (US ‘298) suggests that the composition can contain methoxypolyethylene glycol (meth)acrylate as the monomer (II) containing no fluorine [2:30-38]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17], wherein Prep. Ex. 2 contains ~ 18 wt% StA, based on 100% of copolymer A; ~ 13.7 wt% StA, based on composition without water [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2]. Yamana et al. (US ‘298) does not specifically disclose about 1 wt% to about 5 wt% methoxypolyethylene glycol (meth)acrylate in the copolymer. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 4 wt% methoxypolyethylene glycol in the copolymer (corresponding to ~ 2.8 wt% methoxypolyethylene glycol, based on composition without water), as Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Yamana et al. (US ‘298) discloses the composition can contain a cationic emulsifier, in an amount of 0.5 to 10 parts by weight based on 100 parts by weight monomer [4:34-51]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included cationic emulsifier, in an amount of 0.5 to 10 parts by weight based on 100 parts by weight monomer, based on the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Yamana et al. (US ‘298) suggests that the composition can contain a cationic emulsifier, in an amount of 0.5 to 10 parts by weight based on 100 parts by weight monomer [4:34-51]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Matsumura et al. (US ‘822) provides evidence for Nonion HS-220 having a HLB of 16.2 [5:5-6]; Nonion LT-221 having a HLB of 16.7 [5:51-52].
Regarding claim 12: Yamana et al. (US ‘298) discloses a cationic emulsifier, in an amount of 0.5 to 10 parts by weight based on 100 parts by weight monomer [4:34-51] (5 wt% cationic emulsifier (per 100 wt% monomer) in Prep Ex. 2 would be ~ 1.7 wt% cationic emulsifier in the composition (including water).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Claim(s) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298), when taken with Matsumura et al. (US 4,696,822) as applied to claim 11 above, and further in view of Suzuki (US 2005/0106967).
Regarding claims 13-15: Yamana et al. (US ‘298) discloses the basic claimed resin [as set forth above with respect to claim 11]; wherein Yamana et al. (US ‘298) discloses the addition of flame retardants to the stainproof treatment agent [5:15-20].
Yamana et al. (US ‘298) does not disclose a specific flame retardant. However, Suzuki (US ‘967) discloses stainproof composition [abstract] comprising flame retardants [0070; 0108], such as aluminum hydroxide [0080; 0108] (instant claims 13-15) and boric acid [0080; 0108] (instant claim 16). Yamana et al. (US ‘298) Suzuki (US ‘967) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of stainproof compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined aluminum hydroxide or boric acid, as taught by Suzuki (US ‘967) in the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Suzuki (US ‘967) discloses flame retardants, such as aluminum hydroxide and boric acid for stainproof compositions [0070; 0080; 0108].
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298).
Regarding claim 19: Yamana et al. (US ‘298) discloses a method of emulsion polymerization of monomers in the presence of nonionic emulsifiers [4:14-51], wherein monomer (II) containing no fluorine can be methoxypolyethylene glycol (meth)acrylate and an alkyl (meth)acrylate [2:30-38] such as stearyl acrylate [2:39-53]. Yamana et al. (US ‘298) discloses Preparative Example 2 [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2] contains 134 g FA, 37 g StA (stearyl acrylate), 28 g VCl, 3.5g 2EHA (2-hydroxyethyl methacrylate), 1.8 g DAAM, 1.8 g topolene M, 10.3 g HS-220 (polyoxyethylene alkyl phenyl ether nonionic surfactant), 6.2 g LT-221 (polyoxyethylene sorbitan monolaurate nonionic surfactant), 3.5 g LSH, 44 g DPM, 1.2 g APS (ammonium persulfate), and 330g water {corresponding to about: 13.6 t% StA; 4.9 wt% nonionic surfactants (corresponding to about 4.5 wt%); 0 wt% acid monomers; wt% based without water} [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2].
Yamana et al. (US ‘298) does not specifically disclose Prep. Ex. 2 containing methoxypolyethylene glycol (meth)acrylate. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included methoxypolyethylene glycol (meth)acrylate based on the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Yamana et al. (US ‘298) suggests that the composition can contain methoxypolyethylene glycol (meth)acrylate as the monomer (II) containing no fluorine [2:30-38]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17], wherein Prep. Ex. 2 contains ~ 18 wt% StA, based on 100% of copolymer A; ~ 13.7 wt% StA, based on composition without water [Prep. Ex. 2; 7:38-67; Table 4, Prep. Ex. 2]. Yamana et al. (US ‘298) does not specifically disclose about 1 wt% to about 5 wt% methoxypolyethylene glycol (meth)acrylate in the copolymer. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 4 wt% methoxypolyethylene glycol in the copolymer (corresponding to ~ 2.8 wt% methoxypolyethylene glycol, based on composition without water), as Yamana et al. (US ‘298) discloses monomer (II) repeating unit is present in an amount of 4 to 60 wt%, based on 100 wt% of the copolymer (A) [3:7-17]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamana et al. (US 6,130,298), when taken with Matsumura et al. (US 4,696,822) as applied to claim 19 above, and further in view of Castelvetro, V.; De Vita, C.; Giannini, G.; Giaiacopi, S. J. Appl. Polym. Sci. 2006, 102, 3083 [IDS 3/6/24].
Regarding claim 20: Yamana et al. (US ‘298) discloses the basic claimed resin [as set forth above with respect to claim 19]; wherein Yamana et al. (US ‘298) anionic emulsifiers [4:34-51].
Yamana et al. (US ‘298) does not disclose seeding with from about 0.1 to about 0.25 wt% of an anionic emulsifier. However, Castelvetro et al. (J. Appl. Polym. Sci. 2006, 102, 3083) discloses seeded emulsion polymerizations [abstract] comprising seeding with 0.2 wt% of anionic surfactant sodium dodecyl sulfonate (SDS-0.2) (wt% based on total monomer) [§Expermental; Table 2]. Yamana et al. (US ‘298 Castelvetro et al. (J. Appl. Polym. Sci. 2006, 102, 3083) are analogous art because they are concerned with a similar technical difficulty, namely emulsion polymerizations. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined seeding with 0.2 wt% of anionic surfactant sodium dodecyl sulfonate (SDS-0.2), as taught by Castelvetro et al. (J. Appl. Polym. Sci. 2006, 102, 3083) in the invention of Yamana et al. (US ‘298), and would have been motivated to do so since Castelvetro et al. (J. Appl. Polym. Sci. 2006, 102, 3083) discloses seeding with 0.2 wt% of anionic surfactant sodium dodecyl sulfonate (SDS-0.2) affords a highly monodisperse particle size distribution [abstract].
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 2-6, 8 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5 and 7-8 of copending Application No. 18/689659 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed nonionic latex resin compositions substantially overlap in scope. While Application No. 18/689659 claims from about 4 wt% to 8 wt% of nonionic surfactant, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2-6 and 13 of copending Application No. 18/689601 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed paint composition of Application No. 18/689601 anticipates the instant claimed paint composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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: The combination of Yamana et al. (US 6,130,298) and Suzuki (US 2005/0106967) does not disclose citric acid or a gluconic acid sodium salt [instant claim 17]; does not disclose about 0.25 wt% to about 2.0 wt% of acid [instant claim 18] (ex. boric acid) with sufficient specificity.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
