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 28 is objected to because of the following informalities: “selected from the group that consists of” should be “selected from the group consisting of”. 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 11-28 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 11 recites the limitation "at least 50 phr of the diene elastomeric polymer" in line 13. It is unclear if “the diene elastomeric polymer” refers to diene elastomeric polymer (i), diene elastomeric polymer (ii), both diene elastomeric polymers (i) and (ii), or diene elastomeric polymer in lines 1-2. Additionally, it is unclear if the diene elastomeric polymers are the same or different polymers. Therefore claim 11 and dependent claims 12-28 are indefinite.
Claims 12-13: it is unclear which diene elastomeric polymer in the last line of the claims correspond to in claim 11, therefore claims 12-13 are indefinite.
Claims 14-16: it is unclear which diene elastomeric polymer in line 2 of the claims correspond to in claim 11, therefore claims 14-16 are indefinite.
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 11-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,545,053 in view of Mazzocchia et al. (US 2020/0062933).
U.S. Patent No. 12,545,053 claims an elastomeric composition comprising per 100 phr of diene elastomeric polymer: (i) a predispersion of a first diene elastomeric polymer and lignin, in an amount to provide the elastomeric composition with 100 phr to 10 phr of the first diene elastomeric polymer and an amount of lignin equal to or greater than 25 phr, (ii) 0 phr to 90 phr of a second diene elastomeric polymer, (iii) at least 30 phr of a carbon black reinforcing filler, (iv) optionally, a reinforcing resin comprising at least 1 phr of a methylene acceptor compound associated with at least 1 phr of a methylene donor compound, and (v) 0.1 phr to 12 phr of at least one vulcanising agent, wherein at least 50 phr of the diene elastomeric polymer of the elastomeric composition consists of natural or synthetic isoprene rubber [claim 4]; reinforcing element [claim 3]; tire [claim 1] and structural component [claim 2], which substantially overlaps in scope with the instant claimed elastomeric composition, reinforcing element, structural component, and tire. U.S. Patent No. 12,545,053 does not claim 0.1 phr to 10 phr of carbon nanotubes. However, Mazzocchia et al. (US ‘933) discloses elastomeric compositions comprising carbon nanotubes for tires [abstract], wherein the carbon nanotubes are present in an amount of 0.5 to 5 phr [0080]. U.S. Patent No. 12,545,053 and Mazzocchia et al. (US ‘933) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of elastomeric compositions for tires. 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 0.5 to 5 phr of carbon nanotubes, as taught by Mazzocchia et al. (US ‘933) in the invention of U.S. Patent No. 12,545,053, and would have been motivated to do so since Mazzocchia et al. (US ‘933) discloses 0.5 to 5 phr carbon nanotubes affords the elastomeric compositions with improved tensile strength and ultimate elongation [0026].
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.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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