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 .
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.
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Claims 9,11 and 13-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 12-15 of copending Application No. 18/693187 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, the only difference between the claimed invention and that of ‘187 is the amount of glass fiber being 10-200 parts (claimed) vs. 10-400 (copending). Therefore, the copending claims read on the present claims in an anticipatory manner.
Claims 9 and 11-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-15 of copending Application No. 18/693743 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, the only differences between the present claims and those of the copending are 1) the amount of glass filler being 10-200 parts (present) vs. 10-100 parts (copending) which are overlapping/anticipatory and 2) the inclusion of 1-20 parts of an olefin elastomer of the copending which isnt excluded by the present claims. Therefore, the claims are read on in an anticipatory manner.
Claims 9-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 12-15 of copending Application No. 18/693939 in view of WO 2013141363-Uchigata et al. The only difference between the present claims vs. the copending claims is the copending claims lack the presence of the glass fibers and the presence of an inorganic filler of claim 10.
Uchigata discloses a polyarylene sulfide (PAS) composition which contains 1) 10-350 parts by weight of a glass fiber filler, and 2) 1-200 parts by weight of a glass flake (non-fibrous inorganic filler), both added for improving the thermal shock, heat resistance and mechanical strength.
Therefore, it would have been obvious to one skilled in the art to have added the glass fibers and glass flakes for improving the thermal shock, heat resistance and mechanical strength of the claimed composition of copending 18/693939.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Applications No.’s 18/693187 and 18/693743 in view of WO-2013141363-Uchigata et al.
Claim 9 of both applications have described above and are applied here as such. Those claim 9s lack the presence of the 10-250 parts of non-fibrous inorganic filler of present claim 10.
Uchigata discloses a polyarylene sulfide (PAS) composition which contains 1) 10-350 parts by weight of a glass fiber filler, and 2) 1-200 parts by weight of a glass flake (non-fibrous inorganic filler), both added for improving the thermal shock, heat resistance and mechanical strength.
Therefore, it would have been obvious to one skilled in the art to have added the glass flakes for improving the thermal shock, heat resistance and mechanical strength of the claimed compositions of copending 18/693187 and 18/693743.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 9-16 are allowed, over the cited prior art.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach a PAS composition containing the limitations of 1) the cumulative integrated value of 48-53 and 2) the rate of change of melt flow rate (MFR) being not more than 0.085.
These properties are achieved by the particular selection of the type/production method and treatment of PAS to used in the composition. The production method used to achieve the cumulative integrated value is described in [0106] of the present specification. While achieving the rate of change value is done via the treatment disclosed in [0107] of the present invention.
Therefore, one skilled in the art would have to perform such methods of production and treatments described in 0106 and 0107 to achieve the PAS having the claimed properties in claim 9. None of the prior art cited discloses or makes obvious these production methods and treatments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY P GULAKOWSKI whose telephone number is (571)272-1302. The examiner can normally be reached M-F 7:30-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy P Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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