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.
Claim 4 is 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.
There is a lack of antecedent basis for “the” plasticizer set forth in Claim 4. Neither Clai 4 nor independent Claim 1 set forth a plasticizer prior to this recitation in Claim 4. For the purposes of further examination, Claim 4 will be interpreted to depend on Claim 3, which does set forth “a” plasticizer and therefore provides antecedent basis for this limitation in Claim 4.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1 – 8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2020/0299488 to Kobayashi et al. (hereinafter Kobayashi).
Regarding Claims 1, 2, and 7. Kobayashi teaches porous particles which comprise a cellulose derivative as a main component (see [0017] and Figures 1 and 2, which depict particles having a porous structure).
The cellulose derivative may correspond to a cellulose acylate having an acryl group with 3 or more carbon atoms ([0035] and [0073]). Cellulose acylate having an acryl group with 3 or more carbon atoms is set forth as a species of aliphatic polyester biodegradable polymer in instant Claim 7. The total substitution degree of the cellulose derivative/biodegradable polymer is 0.7 or more and 3.0 or less [0048].
The porous particles disclosed by Kobayashi have an average particle size of 80 nm (0.8 microns) or more to 100 microns or less [0040]; a sphericity of 70% or greater and 100% or less [0044], which may alternatively be expressed as sphericity of 0.7 or more and 1.0 or less; and a degree of surface smoothness of 80% or greater and 100% or less [0046].
Kobayashi is silent regarding the relative specific surface area of the porous particles being more than 3.0 and 20 or less. However, Kobayashi teaches porous particles which are identical in composition to the claimed porous particles and which have the same or substantially similar properties, including an identical average particle size and sphericity and a degree of surface smoothness which has significant overlap with the instantly claimed range of 10% or more and 95% or more. According to the instant specification, “particles having a relative specific area of 3.0 or less correspond to truly spherical fine particles having a smooth surface and having no or very few pores, and…[p]articles having a relative specific surface area of more than 20 make it difficult to maintain high sphericity” (see [0057] of the PG-PUB of the instant application).
This disclosure suggests a direct correlation between relative specific area, sphericity, and surface smoothness. Given that Kobayashi teaches porous particles having an identical sphericity and a degree of surface smoothness which has significant overlap with the instantly claimed range of 10% or more and 95% or more, it would then be the Office’s position that it would be reasonably expected that the relative specific surface area of the porous particles of Kobayashi would fall within the claimed range of more than 3.0 and 20 or less. Alternatively, it would be reasonably expected that the relative specific surface area of the porous particles of Kobayashi would significantly overlap within the instantly claimed range of more than 3.0 and 20 or less. It has been held that where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05)
Regarding Claim 3. Kobayashi teaches the porous particles of Claim 1 may further comprise a plasticizer for the cellulose derivative/biodegradable polymer [0057].
Regarding Claim 4. Kobayashi teaches the porous particles of Claim 3 wherein glycerin-based plasticizers are set forth as a preferred type of plasticizer [0058].
Regarding Claims 5 and 6. Kobayashi teaches the porous particles of Claim 1 in which the biodegradable polymer corresponds to a polysaccharide ester. Limitations directed to the aliphatic polyester do not further limit embodiments in which the biodegradable polymer corresponds to a polysaccharide ester.
Regarding Claim 8. Kobayashi teaches a cosmetic composition comprising the porous particles of Claim 1 [0062].
Claim Rejections - 35 USC 103
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.
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.
Claims 9 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0299488 to Kobayashi et al. (hereinafter Kobayashi), as applied to Claim 1 above.
Regarding Claims 9 – 12. Kobayashi teaches a method for producing the porous particles of Claim 1 comprising
preparing a mixture by mixing a biodegradable polymer, plasticizer, and a water-soluble polymer ([0065], [0085], and [0086]);
melt-kneading the mixture at a temperature of 200°C or higher or 280°C or lower to obtain a kneaded product [0066] – [0067];
and removing the water-soluble polymer from the kneaded product [0076]. Kobayashi teaches polyethylene glycol and thermoplastic starch as preferred water-soluble polymers [0071] but not expressly an embodiment in which they are provided together. However, it has been held that it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (MPEP 2144.06) Consequently, it is the Office’s position that, before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to use a combination of polyethylene glycol and thermoplastic starch in the above described method of Kobayashi. In light of In re Kerkhoven, combining polyethylene glycol and thermoplastic starch would have been obvious given their known and shared intended use as preferred water-soluble polymers in the method of Kobayashi [0071].
Given that the proposed combination provides specific species of instantly claimed biodegradable polymer (cellulose acylate having an acyl group containing 3 or more carbon atoms), first thermoplastic polymer (thermoplastic starch), and second thermoplastic polymer (polyethylene glycol), it is the Office’s position that it would be reasonably expected that the instantly claimed relational expression set forth in instant Claim 10 would further be satisfied.
Regarding Claim 13. Kobayashi teaches the method of Claim 9 wherein glycerin-based plasticizers are set forth as a preferred type of plasticizer [0058].
Regarding Claim 14. Kobayashi teaches the method of Claim 9 wherein a blended amount of plasticizer is greater than 0 and 40 parts by weight of less relative to 100 parts by weight of the total amount of cellulose derivative and plasticizer [0086], which can be calculated to correspond to an amount of plasticizer of greater than 0 and 60 parts by weight or less relative to 100 parts by weight of the total amount of biodegradable polymer.
Regarding Claim 15. Kobayashi teaches the method of Claim 9. In the rejection of Claim 9, the Office set forth the position that it would have been obvious to a person of ordinary skill in the art to use a combination of polyethylene glycol and thermoplastic starch as water-soluble polymers in the method of Kobayashi.
Kobayashi teaches the water-soluble polymer is provided in an amount of 55 parts by weight or greater to 99 parts by weight or less relative to 100 parts by weight of the total amount of cellulose derivative and water-soluble polymer [0070], which can be calculated to correspond to an amount of water-soluble polymer of roughly 82 parts by weight or more and 9900 parts by weight or less relative to 100 parts by weight of the total amount of biodegradable polymer. Thus, when a combination of water-soluble polymers is used, the first and second water-soluble/thermoplastic polymers would each be included in an amount of greater than 0 and less than 9900 parts by weight relative to 100 parts by weight of the total amount of biodegradable polymer.
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 – 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 3 and 5 – 13 of copending Application No. 18/010,591.
It is clear that all the elements of the instant claims are to be found in the claims of Application No. 18/010,591, as the instant claims fully encompass the claims of Application No. 18/010,591. The difference between the instant claims and the claims of Application No. 18/010,591 lies in the fact that the patent claim includes more elements, e.g. that the biodegradable polymer corresponds to cellulose acetate and that the porous particles have an oil absorption value within a claimed range, and are thus much more specific. Thus, the invention of the claims of Application No. 18/010,591 is in effect a "species" of the "generic" invention of the instant claims. It has been held that the generic invention is "anticipated" by the "species". See In Re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the instant claims are anticipated by the claims of Application No. 18/010,591, they are not patentably distinct from the claims of Application No. 18/010,591.
This is a provisional nonstatutory double patenting rejection.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to biodegradable polymer particles which may be porous.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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