DETAILED ACTION
Citation to the Specification will be in the following format: (S. # : ¶/L) where # denotes the page number and ¶/L denotes the paragraph number or line number. Citation to patent literature will be in the form (Inventor # : LL) where # is the column number and LL is the line number. Citation to the pre-grant publication literature will be in the following format (Inventor # : ¶) where # denotes the page number and ¶ denotes the paragraph number.
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 .
Status of Application
The preliminary amendment dated 7/12/2024 has been received and will be entered.
Claim(s) 1-7 is/are pending.
Claim(s) 3, 5, 6, and 7 is/are currently amended.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 7/12/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
I. Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,325,840.
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 corresponds to Claim 1 of ‘840. For all claims discussed below: close values and overlapping ranges are obvious. See discussion in the 35 U.S.C. 103 rejection over US 11,325,840 below.
Claim 2 corresponds to Claim 2 of ‘840.
Claim 3 corresponds to Claim 7 of ‘840.
Claim 4 corresponds to Claim 4 of ‘840.
Claim 5 corresponds to Claim 11 of ‘840.
Claim 6 corresponds to Claim 12 of ‘840. A paint is interpreted as a coating material.
Claim 7 corresponds to Claim 14 of ‘840.
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.
I. Claim(s) 1-7 – or as stated below - is/are rejected under 35 U.S.C. 103 as being unpatentable over US 11,325,840 to Neya, et al.
Neya was published on 5/10/2022 and claims priority to 11/30/2020. Neya lists an additional inventor (Masahiro Nobe). As such, it is not clear that a prior art exception applies. See MPEP 2153.01(a) (“If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies.”).
With respect to Claim 1, this claim requires “[a] zinc oxide powder, wherein a BET specific surface area is equal to or more than 1.5 m2/g and less than 8 m2/g.” Neya teaches a BET surface area of 8 m2/g or more and 65 m2/g or less. (Neya 5: 64 et seq.; passim). “[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” MPEP 2144.05 I (citations omitted).
Claim 1 further requires “an apparent specific volume by a loose packing method is equal to or more than 0.8 mL/g and equal to or less than 4.0 mL/g.” Neya teaches an apparent specific volume measured by the loose packing method equal to 1.0 mL/g or more and 7.5 mL/g or less.” (Neya 6: 39 et seq.). “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP 2144.05 I.
Claim 1 further requires “a value (the apparent specific volume by the loose packing method/an apparent specific volume by a tapping method) obtained by dividing the apparent specific volume (mL/g) by the loose packing method by the apparent specific volume (mL/g) by the tapping method, is equal to or more than 1.50 and equal to or less than 2.50.” The value is taught. (Neya 7: 20 et seq.; 7: 38).
As to Claim 2, the values are taught. (Neya 9: 36 et seq.).
As to Claim 3, the components are taught. (Neya 11: 59 et seq.).
As to Claim 4, the values are taught. (Neya 9: 36 et seq.).
As to Claim 5, a dispersion medium is taught. (Neya 14: 21 et seq.).
As to Claim 6, paint – interpreted as a “coating material” – is taught. (Neya 15: 49 et seq.) Resins (Neya 16: 7-11) and dispersion mediums (Neya 15: 64 – 16: 2) are taught.
As to Claim 7, cosmetics are taught. (Neya 16: 40 et seq.). Dispersions are taught. (Neya 14: 21 et seq.). Dispersion mediums are taught. (Neya 14: 21 et seq.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL C. MCCRACKEN whose telephone number is (571) 272-6537. The examiner can normally be reached on Monday-Friday (9-6).
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, Anthony J. Zimmer can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL C. MCCRACKEN/Primary Examiner, Art Unit 1736
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