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.
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 1-7,9,12 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7,9,11,13 and 14 of copending Application No. 19/478636 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application contains all of the instantly claimed limitations , and more (the properties of the last 13 lines of claim 1). Therefore, the copending claims read on the instant claims in an anticipatory manner.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7,9 and 12-14 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by CN-107325281 (machine translation provided).
The CN reference discloses molded articles made from polyamide elastomers made from block copolymers of polyamide hard segments and polyester/polyether soft segments, see 0004. The polyamide block- is a semi-aromatic nylon made from long chain (Aliphatic) diamines (0011) which within the claimed 4-18 carbon atoms and can be present at 100 mol%; and aromatic diacids, preferably terephthalic acid (0010, 0013) having a molecular weight (mwt) of 200-3000 (0009). Copolymer block B, the polyether, can be a polyether diamine with a MWT of 600, see example 1. That low mwt diamine would be expected to have a Tg of 20 degree C or less. The block copolymer has MPs of 245+ C, as can be seen from the last row of the chart from 0033 of the reference. The polyamides are made from 1 or 2 step method of polymerization, see 0017.
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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.
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over CN-107325281 in view of JP-H04-306229.
The disclosure of the CN reference is described above and repeated here as such. The CN reference lacks the disclosure of the WMWT of the final block copolymer, and the tensile elongation.
The JP disclose an extremely similar polyamide/polyester block copolymer using the same building block monomers to make the copolymers. The reference teaches that the degree of polymerization, and hence the MWT is important for achieving the improvements in the physical properties and biodegradability of the final block copolymer. The JP’s MWT of the final copolymer being in the range of preferably 51,000-130,000, see 0013-0014.
Therefore, it would have been obvious to one skilled in the art to control the final MWT of the block polymer of CN reference to be within the range of 51K-130K to achieve improved physical properties and biodegradability, as taught by the JP. Once, the MWT is controlled achieved, one skilled in the art would expect the elongation to break would be the same/similar in view of the similarities of the block copolymers of the references.
Claim 8 is 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: None of the cited references disclose the claimed terminal functional group content of 50-5000 of polymer block A. Nor do the reference give any indication of obviousness of said functional group content.
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.
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, 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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