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 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 1-9 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 is confusing based on the lack of punctuation, step designations and placement of words. Therefore, the meets and bounds of the scope of the claim are unclear. It is suggested that the claim be rewritten as follows:
1. (Currently Amended) A method of collecting ε-caprolactam and a polyamide 6 oligomer, comprising mixing a resin composition containing at least polyamide 6 and,
(B1) water and/or
(B2) a polyamide 6 oligomer aqueous solution , separation (I) in a temperature range not higher than a boiling point of water at an operation pressure to separate and collect a polyamide 6 oligomer in a solid phase, and an ε-caprolactam aqueous solution in a liquid phase.
Claim 3 is considered indefinite, since the meets and bounds are unclear and/or is confusing. The claim reads as, wherein the final output/step of the method, the collected PA-6 oligomer obtained is used in an earlier step. How can the “final product” be used in an earlier step?
The remaining claims 2 and 4-9 are rejected for being dependent upon the rejected base claim, and fail to correct the issues.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Both claims appear to simply repeat what is already present in claim 1, and hence fail to further limit the claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
1)
Claims 1,2,5,6,7 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,2,4,6 and 7 of copending Application No. 18/701126 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims of application ‘126 differ from the instant, in that, they require additional steps (not excluded by the present process) of collecting and separating fibers, along with other ratio limitations. While the present claims state in the preamble that polyamide-6 oligomer is also collected, that would be considered inherent to the exact same process steps using the same materials. Therefore, the instant claims are read on by the copending claims in an anticipatory manner.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
2)
Claim 9 is provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 of copending Application No. 18/701126 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
These method claims both contain product by process (PBP) limitations, which are the methods of their respective claim 1s. The claims are in essence merely the polymerization of e-caprolactam, which no matter how they are obtained are chemically the same compound. Therefore, the scope of these claims are considered identical.
3)
Claims 1,2,5,6,7,8 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7-12 of copending Application No. 18/697715 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Although the claims of the copending contain an additional step of producing a thermoplastic, such is not excluded by the instant claims, and all of the claimed method steps being present. Therefore, the instant claims are read on in an anticipatory manner.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(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) 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US patent 5495015- Basseler et al.
Cassler discloses the recycling of polycaprolactam (which include polyamide-6/nylon-6) containing waste using a process of combining the waster polymer with water and treating with superheated water, from 280-320 degree C, see column 1. The process further includes separating caprolactam from any solids present (top of column 4). The caprolactam obtained, can be converted (polymerized) back into polycaprolactam. Although the polyamide-6 oligomer is not mentioned, since the process steps and components used are the same, one skilled in the art would expect those PA-6 oligomers to be inherently present.
Claim(s) 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US patent 6020486 Booij et al.
Booij discloses the depolymerization of polyamides, specifically PA-6 containing waste using a process of combining the waste polymer, alcohol with water and treating with superheated water, from 200-350 degree C, see column 2. The process further includes separating the remaining polymers/oligomer crystalline solids present (bottom of column 2). The caprolactam obtained, can be converted (polymerized) back into polycaprolactam. Although the polyamide-6 oligomer content is not mentioned, since the process steps and components used are the same, one skilled in the art would expect those PA-6 oligomers to be inherently present.
Claim(s) 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP patent 46-024035.
The JP discloses:
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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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