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 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, 2, 5, 7-8, 11-12, and 14-26 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 1 recites, “wherein substantially all polyethylene glycol of the polymer composition,” The term "substantially" is a relative term which renders the claim indefinite. The term "substantially" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The term "substantially" is often in conjunction with another term to describe a particular characteristic of the claimed invention. It is a broad term. In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960). See MPEP 2173.05(b).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 5, 7-8, 11-12, and 14-26 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,702,535 in view of LAVALLEE et al. (U.S. Publication No. 2016/0229994).
U.S. Patent No. ‘535 discloses a polymer composition comprising an ethylene copolymer comprising units derived from ethylene and unites derived from one or more C3 to C20 α-olefins; and from 200 to 10000 ppm (on the basis of mass of the polymer composition) of a polymer processing aid, wherein the polymer processing aid comprises at least 99 wt% of a blend comprising from 100 to 9900 ppm of:
(A) a surfactant comprising a polysorbate and (B) a polyethylene glycol, wherein the blend comprises the surfactant. The polyethylene glycol has a weight average molecular weight of less than 40,000 g/mol.
However, U.S. Patent No. ‘535 does not disclose a polymer composition comprising (iii) a metal salt of a fatty acid.
LAVALLEE teaches polymer processing additive and compositions comprising a metal salt of carboxylic acid which include calcium stearate, zinc stearate, barium stearate, aluminum stearate, potassium stearate, and magnesium stearate, etc. in an amount of up to 15%, 10%, 5%, or 2.5% by weight. The metal salt can improve the thermal stability of the polymer.
Given LAVALLEE discloses a polymer processing additive, it would have been obvious to a person of ordinary skill in the art to have provided the metal salt of LAVALLEE with the polymer composition of U.S. Patent No. ‘535 for the benefit of improving the thermal stability.
Prior Art
DUCHESNE et al., the closest prior art of record, fails to teach a polymer composition comprising 200 to 10000 ppm of a polymer processing aid, wherein the polymer processing aid comprises at least 99 wt% of a blend comprising each of two or more of (ii) a surfactant comprising a sorbitan ester or a polysorbate and wherein all polyethylene glycol of the polymer composition, has a weight average molecular weight less than 40,000 g/mol; and further wherein each blend component is present in an amount within the range from 100 to 9900 ppm, on the basis of mass of the polymer composition.
DUCHESNE teaches a composition from 50 to 99.99 weight percent based on the total weight of the composition of a melt-processable thermoplastic hydrocarbon polymer. The composition comprises additives and synergist (e.g., polyethylene glycols and zinc stearate) which does not satisfy the claim limitations of the present invention. Therefore, DUCHESNE fails to disclose or render obvious the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
