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 Interpretation
Under the broadest reasonable interpretation, a claim construction standard which is anchored in the Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005), the scope of the instant claim is interpreted in following manner.
Claim 1 requires a hydrophobic thermoplastic powder which comprises salt of a fatty acid-based compound and a thermoplastic polymer. The polymers are defined in claim 15 as a biodegradable resin. With respect to the ionic bond, it is a decades ago established fact that the fatty acid-based salts will always be an anion because, for example, in case of carboxylic group oxygen is more electronegative than hydrogen as such if hydrogen is removed oxygen gains extra electron giving it a full negative charge leading to charge delocalization between two oxygen atoms in the carboxylate group. Cations will form ion bond which is a strong bond that stabilizes the anion. Even compounds want to be “happy”.
Claim 1 is further open to any biodegradable polymer and the polymer itself does not have to be hydrophobic. The hydrophobicity is attributed to the entire composition of the powder including fatty acid compounds. Consequently, it is interpreted that the hydrophobicity is attributed to presence of the hydrocarbon group of the fatty acid. What is also well established in the art is that fatty acid salts can form a coating on the surface of the powder. Polar group of the fatty acid will interact with polar polymer powder which would result in hydrophobic component to be the outermost “layer”. Fatty acids, under certain conditions, can also leach out of the polymer particle forming hydrophobic layer. Another way to render polar polymer particle hydrophobic is by adsorption of the fatty acid salt. These are just top three possibilities of how the particle is made hydrophobic, each of which will be considered during prosecution of the application.
Claim 1 further recites in the preamble, marine biodegradation promoter. The composition as disclosed above comprises thermoplastic polymer and salt of a fatty acid-based compound. For example, if applicants biodegradable polymer is PHA or PCL or PLA along with salt of, for example stearic acid, the powder will inherently be promoting marine biodegradation.
The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Since compounds and their properties are mutually exclusive exactly the same composition will have the same properties as those claimed in the art. Furthermore, Discovery of a new property or use of previously known composition, even if unobvious from prior art, cannot impart patentability to claims to already known composition. In re Spada 15 USPQ2d 1655 (CAFC 1990).
Claim 1 further requires that the powder be soluble in 3% NaCl solution. Similarly, if the same composition is disclosed the properties of the composition will still be mutually exclusive and therefore the same polymer and the same fatty acid-based compound will result in the same solubility.
Instant claim 11, recited average particle size of the powder to be 1-10,000 microns. Upper range, 10,000 microns is equivalent to 10 mm or 1 cm. As such the term powder will be interpreted very broadly, encompassing not just powders, but also granules, aggregates and pellets.
Claim 13 is directed to the property of the melt-molded body and not the powder itself. Consequently, claim 13 fails to further limit scope of instant claim 1.
Request for clarification
Applicants claim require the powder to be soluble in 3% NaCl solution, however, not all solution will be to dissolve. By definition, if compound is soluble in a liquid it means that by mixing compound in a liquid that compound becomes part of the liquid (Merriam-Webster Dictionary). Dissolution of a powder, however, depends on many factors. These factors include type of cation, length of the hydrophobic chain and type of the polymer. A 3% solution is not a “strong” solution in the sense of being highly concentrated, but it is considered an aqueous electrolyte. Applicants listed in their dependent claim that cations are selected from calcium, magnesium and aluminum. Solubility in NaCl is similar to water, because NaCl is highly soluble and does not significantly alter the polarity of solvent (water). Consequently, salts of fatty acid comprising claimed cations will typically be insoluble in the claimed solution.
Biodegradable polymers such as PHA, PLA, PBAT, PGA and the like all of which are typically insoluble in aqueous solution or only slightly soluble. As such it is not clear as to how a polymer can be soluble in the 3% NaCl solution unless it is modified with polar group or it is a certain water-soluble polymer (PHA copolymer).
There is nothing in the specification which would explicitly support the claim where every polymer encompassed by the claim and every fatty acid-based compound can be soluble as required by instant claim 1.
Another option is that the thermoplastic powder exhibits hydrophilicity in a 3% NaCl solution. This limitation is also not a guarantee, and certain conditions have to be met to increase hydrophilicity. In water fatty acid salts tend to form micelles with hydrophobic tail facing outwards. Biodegradable polymers can be designed to be hydrophobic or hydrophilic depending on their functional groups. On one hand NaCl increases ionic strength, which can promote aggregation of fatty acid salt domains, may potentially expose the polymer functional groups which will only increase the hydrophilicity when polymer is hydrophilic. On the other hand, NaCl can create “salting-out” effect which actually reduces solubility od polar groups and promotes hydrophobic interaction.
In this case, the instant invention also fails to provide evidence that every single thermoplastic biodegradable polymer and any salt of fatty acid can achieve claimed increased solubility.
Claim 1 is also open with respect to the amounts of the two components, which means that any type of claimed compound in any amount will either dissolve, have increased hydrophilicity and function as biodegradation promoter. Such is also not explicitly supported by the spec.
Instant specification discloses a very specific fatty acids, in very specific amount and no specific polymer is utilized. In fact, inventive examples A1-A6 disclose particles comprising only fatty compound. Examples 3.1-3.7 disclose solubility test particles A1-A6, which also do not have polymer included in the particulate. The examples which reflect applicants invention are not commensurate with the scope of rather a very generic “catch all” claim especially when examples do not disclose thermoplastic polymer. Consequently, the examiner further requests the clarification of the “thermoplastic powder” and what renders the powder thermoplastic because fatty acids do improve properties of the thermoplastic polymer but they themselves are not thermoplastic. The examiner will wait for the clarification from applicants before making the decision if enablement rejection is warranted.
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 1-17 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.
Instant claim 1 discloses term “hydrophobic thermoplastic powder”, which has not been defined in the specification. The specification teaches a powder which comprises fatty acid derivative. There are no examples which disclose use of thermoplastic polymer. By definition, thermoplastic powder is a term that defines a powder comprising thermoplastic polymer. Under broadest reasonable interpretation, instant claim encompasses fatty acid salt such as calcium stearate, which is not thermoplastic at all. The claim will be interpreted requiring component that renders the powder thermoplastic. This may include thermoplastic polymer with fatty acid salt or fatty acid salt that is modified with compound that may impart thermoplastic character to the powder.
Note: while applicants do disclose thermoplastic resin, in the light of the specification the resin is part of the molded article not the thermoplastic powder. It should also be noted that while claims are interpreted in the light of the specification, the specification cannot be read into the claims.
Claim Rejections - 35 USC § 112
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.
Claim 13 is 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. Instant claim 1 is directed to a thermoplastic biodegradation promoter in form of a particle. Claim 13, which directly depends on claim 1 requires a contact angle property which is attributed to the molded article not the claimed powder, wherein molded article will have different composition that includes host polymer and other additives that are not required for instant claim 1. 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.
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.
Claim Rejections - 35 USC § 102
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.
Claims 1-4, 8, 12-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barclay (GB 2 464 285).
With respect to claims 1-4, Barclay discloses a polymer additive for enhancing polymer degradation (Abstract). The additive comprises a transition metal salt of wherein 2 out of 4 salts have 18 carbon atoms. Specifically, stearate and oleate, both of which are monovalent organic anions of monovalent carboxylic acid, which meets instant claims 2 and 3. Stearate further meets the limitation of instant claim 4. It is further noted that salts of are solids at room temperature and in the form of a granule (P. 4, l. 30) wherein incorporation into a masterbatch renders the additive thermoplastic. The transition metal, such as Manganese has valence of 2 or more and has relatively high charge density making it a good Lewis acid. High positive charge allows formation of ionic bonds.
The additive masterbatch is in form of a pellet having size suitable for incorporation into a plastic product (p. 7).
With respect to the limitation of the solubility, consistent with the claim interpretation above, salt of stearic acid will have the same solubility in teachings of Barclay as it does in the instant invention, because compounds and their properties are inseparable. In a similar manner the same compound will also have the same effect on hydrophilicity (p. 6, l. 3) when subject to the same 3% NaCl solution.
With respect to the marine biodegradation, consistent with the claim interpretation above, compounds and their properties are inseparable, therefore the same compound will promote degradation of thermoplastic polymer because compounds and their properties are inseparable.
With respect to claim 8, the fatty acid compound does not include cyclic moiety.
With respect to claim 12, the melt temperature of stearate with manganese, for example as transition metal having valence of 2 or more is in a range of 100-110oC which is the physical property of stearate, and it is dependent on the length of the hydrocarbon chain within the fatty acid.
With respect to claim 13, claimed property is that of a molded body and not the powder additive consequently, the composition has to only be capable of obtaining claimed contact angle. Since the additive is a stearate as required by claim 4, and the polymer of Barclay includes the same polymers as those of instant invention, the contact angle is viewed as an inherent property.
With respect to claims 14 and 15, the additive of Barclay are incorporated into thermoplastic polymers which are biodegradable (p. 3, l. 12).
With respect to claim 16, while Barclay does not explicitly disclose the amount of the fatty acid salt, he teaches that the content of the salt has to be sufficient to cause enough scission of the C-C bonds to result in materials having lower molecular weight (P. 2). So that the material can be biodegraded naturally (p. 1). Consequently, the same amount of stearate in Barclay’s invention will have to be utilized to facilitate degradation of the same polymer (PHA).
With respect to claim 17, the degradant of Barclay is incorporated into thermoplastic biodegradable polymers to make molded articles (p. 8).
Claims 1-4, 8, 10, 13-15 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN 1164661 submitted by the applicants).
With respect to claim 1, Wang discloses a biodegradable particle which is utilized in the composition that cannot be dully degraded (p. 5). The particle comprises starch and reactive additives and biodegradable polymer which renders particle hydrophobic. Particle is in form of a powder (see example 1).
Reactive additives include metal salts of fatty acids and fatty amides (p. 6) wherein salt such as calcium stearate (18C) will inherently possess ionic bond between calcium cation and stearic acid anion. Since the metal salt of the instant invention is the same as the metal salt of Wang, its properties that are mutually exclusive will inherently be met. These properties include solubility in 3% solution of NaCl as well as is biodegradability towards polymers in salt water.
With respect to claims 2-4, 8 and 10, fatty acid salts include calcium stearate and magnesium stearate, as preferred (p. 6) other fatty acid groups include palmitate, myristate, oleate, laurate. All of the fatty acids listed by Wang are aliphatic groups.
With respect to claim 12, the powder of has melt temperature in a range of 80-130oC (p. 9). Also see example 1.
With respect to claim 13, the contact angle property refers to the molded body in lieu of the claimed powder. Consequently, the powder has to be capable of providing such result. The particulates of Wang comprise thermoplastic component and fatty acid component, wherein both thermoplastic and fatty acid salt are the same as those of the instant invention.
With respect to claim 14, 15 and 17, Wang discloses in his examples incorporating biodegradable particle into thermoplastic polymer to obtain molded article. The polymer can be polyethylene or biodegradable (examples) to make fully biodegradable article (p. 9)
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Barclay (GB 2 464 285) in view of Kileci (WO 2007/027163).
The discussion of Barclay from paragraph 1 of the office action is incorporated here by reference. In summary Barclay disclosed a degradant for thermoplastic resin comprising transition metal salt of fatty acid. Claim 1 was rejected by Barclay, because regardless of which transition metal is utilized, that the metal salts have a transition metal cation, they all have valence of 2 or more.
Having said that, Barclay does not explicitly disclose any metal other than generic description of “transition metal”.
With respect to claim 10, Kileci discloses a very similar additive for thermoplastic articles, which also includes transition metal salt of fatty acid (Abstract). The degradation agent is also added to a masterbatch rendering the powder as a thermoplastic powder. The important aspect of the teachings of Kileci is that it provides the definition of transition metal.
Specifically, transition metal includes cobalt, manganese, copper, aluminum zinc and the like. It is noted that while aluminum is located in p-block (group 13) it has oxidation state of 3 and as post transition metal (overall encompassed by the term transition metal) it shares various metallic properties with the actual transition metals.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to select aluminum disclosed in Kileci as the in the metal salt of Barclay and therefore obtain instant invention. Such modification would still result in efficient polymeric degradant as supported by Kileci since the valency of the metals is in the same range as those of Group 3-12 of the periodic table.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Barclay (GB 2 464 285) in view of Chang (US 5,258,422).
The discussion of Barclay from paragraph 1 of the office action is incorporated here by reference. In summary Barclay disclosed a degradant for thermoplastic resin comprising transition metal salt of fatty acid. The content of the metal salt in Barclay would have to be adjusted in order to facilitate the degradation of the polymeric component, and while the amount encompasses claimed range, the actual amount is not disclosed.
With respect to claims 4 and 16, Chang teaches biodegradable thermoplastic composition also comprising biodegradation agent that is used in combination with antioxidant (Abstract). Chang discloses that the additive comprises hydrolytically unstable antioxidants, which become unstable upon exposure to water (starting col. 7) and “pro-degradants” (col. 10) which are transition metal salts of fatty acids such as stearates, palmitates and myristates. The content of the transition metal salts is 5-10 wt.% and can be adjusted depending on the desired decomposition rate (col. 10, l. 43-48), wherein adjustment of the oxidation rates is viewed as efficient carbon scission in Barclay.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art to utilize the amount of fatty acid salt of Barclay in the same amount as disclosed in Chang and thereby obtain claimed invention. It would be also obvious to increase this amount based on the desired oxidation rate as taught by Chang. Such content of the same fatty acid salt (manganese stearate (Table IV) would act in the same manner in both Barclay and Chang.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Barclay (GB 2 464 285) in view of Adawiyah article (Synthetic, characterization, ecotoxicity and biodegradability evaluation of novel biocompatible surface active layuroyl sarcosine). Evidence of properties using bench chem summaries is included.
The discussion of Barclay from paragraph 1 of the office action is incorporated here by reference. In summary Barclay disclosed a degradant for thermoplastic resin comprising transition metal salt of fatty acid. The pro-degradants of Barclay are based on metal salts of fatty acids having 10-25 carbon atoms.
Difference between instant invention is recitation of metal salts of fatty acid that carry amine functionality.
Adawiyah discloses results of his research which compares lauroyl sarcosinate based surfactants to its equivalent conventional surfactants. Surfactants comprising lauroyl sarcosinate anion have functionally equivalent ability for form micelles which corresponds to the length of the alkyl chain and type of the cation which influences surface tension (3.1.3). Adawiyah suggested that synergism between lauroyl sarcosinate anion and cation can improve surface activity by at least 7 times that of the salt of the lauric acid (3.1.3).
The biodegradability of the lauroyl sarcosinate anion (3.3) studies revealed that lauroyl sarcosinate surfactants themselves have biodegradability that is on par with conventional surfactants or better, wherein chain length is inversely proportional to the possible toxicity of the compound.
Consequently, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize lauroyl sarcosinate as the anion part of the fatty acid salt. Lauroyl sarcosinate is classified as green surfactant due to presence of fatty acids and amino acids within the degradation pathways and at the same time overcomes some other advantages of the conventional surfactants which can suffer premature precipitation and solubility issues.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Barclay (GB 2 464 285) in view of Andrews (WO 2017/087658).
The discussion of Barclay from paragraph 1 of the office action is incorporated here by reference. In summary Barclay disclosed a degradant for thermoplastic resin comprising transition metal salt of fatty acid. The biodegradability of the fatty acid soaps is attributed to the anionic and cationic group, in other word the metal salt component of the additive since the metal cation catalyzes oxidation to reduce molecular weight of the chain to a level where the material can be degraded naturally in the environment they are in. This is explicitly recited on page 1 of Barclay, and fatty acid salts are widely utilized also as surfactants and lubricants.
The difference between instant invention and Barclay is showing that the fatty acid amine-based compound are functionally equivalent to fatty acid-based compounds in their function not only as lubricants and surface active agents but also due to presence of the same metal salt also as oxo degradant.
With respect to claim 9, Andrews discloses biodegradable composition as an additive which comprises biodegradable polymer blend and active additives (Abstract), wherein the rate of degradation can be controlled. Andrews achieves better biodegradability in two ways. First is use of a blend which comprises PHA and another polymer such as PBS that has a higher biodegradation rate [0023]. Second is addition of claimed compounds [0079] which include lubricant surfactants. Andrews explicitly states that these additives contribute to the overall biodegradation rate of the polymer blend.
Anionic surfactants include salts of fatty acids [0082] [0085] salts of fatty acid alkylolamides or octadecyl based amides.
The additive of Andrews is utilized with biodegradable polymer to form pellets wherein pellets are then utilized to make molded disposable articles [0104-0105].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Barclay (GB 2 464 285) in view of Asrar (US 2002/0061944).
The discussion of Barclay from paragraph 1 of the office action is incorporated here by reference. In summary Barclay disclosed a degradant for thermoplastic resin comprising transition metal salt of fatty acid. Barclay discloses that the additive in in form of small pellets which can be added to the host polymer to make molded article. However, Barclay does not teach the diameter of the pellets.
With respect to claim 11, Asrar discloses another composition in form of a pellet that comprises PHA in combination with compounds such as calcium stearate of magnesium stearate in an amount of up to 5 phr [0045] as most preferred embodiment further listing palmitate as another fatty acid salt. Magnesium stearate of calcium stearate are also utilized as thermal stabilizers and lubricants.
The composition of Asrar is in form of a pellet having diameter of less than 710 microns, preferably less than 350 microns [0050]. Pellets are then utilized to make molded article.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant inventio was filed to make additive pellets of Barclay into pellets having size as disclosed by Asrar. Pellets having diameter of Asrar can be easily extruded to form molded articles, which is exactly what Barclay requires. Having particles or pellets that are too large would adversely affect the efficient blending of the pellets with host polymer which in turn would negatively affect overall mechanical properties of the final product.
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 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/712,566 (‘566). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of co-pending invention ‘566 is directed to a marine biodegradable promoter comprising 2 or more monovalent organic ions with metal cation ionically bonded to the anion wherein the metal has valence of at least 2.
Claim 1 of the instant invention is directed to a marine biodegradation promoter comprising a compounds having anionic monovalent compound ionically bonded to metal cation having valence of at least 2.
The difference between the two composition is that ‘566 requires two compounds while instant invention only recites one. However, instant invention has a language “comprising” which enables use of another fatty acid soap thereby meeting the requirement of having two compounds. Additionally, both claims list a closed Markush group wherein the compounds are selected from the same groups. The compounds within Markush groups are alternatives of one another as they both share common anion and common cation. This further means that each compound encompassed by the Markush group will provide composition with the same result and each one can be utilized in the same manner.
It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Consequently, utilizing two compounds from the same group would also provide the same result as the results will be cumulative. In re Kerkhoven 626 E.2d 846, 850 205 USPQ 1069, 1072 (CCPA 1980).
Consequently, the two inventions are obvious variants of one another and practicing instant invention would also result in co-pending ‘566.
Content of the carbon atoms in instant invention is within the content of the carbon atoms of ‘566 and both invention require the same solubility or hydrophilicity increase when subject to 3% NaCl solution. Recitation of thermoplastic powder further meets the limitation of copending claim 12.
Instant claim 1 falls within range of copending claim 2.
Instant claim 2 is the same as copending claim 4.
Instant claim 3 is the same as copending claim 3. The length of the carbon atoms further encompasses species of instant claim 7. Molecular weight of the compounds listed in instant claim 7 further meets the molecular weight of co-pending claim 10.
Instant claim 5 is within the range of copending claim 5.
Instant claim 6 is within the range of copending claim 6 reciting the same amino acids.
Instant claim 8 is the same as copending claim 7
Instant claim 9 is the same as copending claim 8.
Instant claim 10 is the same as copending claim 9.
Both invention recite the same claim 11.
Instant claim 12 is the same as copending claim 13.
Instant claim 13 is the same as copending claim 14.
Instant claim 14 is the same as copending claim 15.
Instant claim 15 is the same as copending claim 16.
Instant claim 16 is the same as copending claim 17.
Instant claim 17 is the same as copending claim 18.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 September 25, 2026
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