DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-16 are currently pending in the application.
Specification
The disclosure is objected to because of the following informality:
The specification should be amended to include that the present application is a Divisional application of US Application No. 16/499,365 filed on Sept. 30th, 2019 (now US Patent No. 12,060,491), which is a 371 application of International Application No. PCT/EP2018/061686, filed on May 7, 2018, that claims priority to European Patent Application No. 17 305 524.5, filed on May 9, 2017
Appropriate correction is required.
Claim Objections
Claims 1, 14 and 16 are objected to because of the following informality:
The bituminous composition in the cited claims consist of a bitumen (94-99.98 wt.%), a hydroxide XOH (at most 3 wt.%), and at least one amine additive (at most 3 wt.%), the weight percentages being based on the total weight of the bituminous composition.
Although the claims do not rise to the level of indefiniteness under 112(b), given that the upper limit of bitumen is 99.98 wt.%, and given that the recitations “at most 3%” include 0 as the lower limit, i.e., both, the hydroxide and the at least one amine additive may be absent, applicant is advised to amend the claims to improve clarity, by reciting a positive lower limit for the amount hydroxide and/or additive, so that the weight percentages of the components add up to 100.
Appropriate correction and/or clarification 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 5 and 7 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claims recite the broad recitations and the claims also narrower statements of the range/limitations as shown below. The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites the following limitations:
- R is a saturated or unsaturated, substituted or unsubstituted, optionally branched or cyclic, hydrocarbon radical with 8 to 24 carbon atoms, for example derived from tallow fatty acids, or tall oil fatty acids,
- R₁ and R₂ can be the same or different and are selected from hydrogen or hydrocarbon radical with 1 to 24 carbon atoms; R₁ and R₂ are preferably selected from hydrogen or methyl”,
- n is an integer greater than or equal to 1, in particular n is an integer from 1 to 6, and
- p is an integer greater than or equal to 1, in particular p is an integer from 1 to 10.
Claim 7 recites the following:
- p is an integer greater than or equal to 1, in particular p is an integer from 1 to 10, and
- L is a linear or branched hydrocarbon radical with 1 to 6 carbon atoms, for instance L is -(CH₂)m- with m = 1, 2 or 3.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8, 10-12 of U.S. Patent No. 12/060,491 B2.
Regarding claims 1-4, 6, 9-14 and 16, although the claims at issue are not identical, they are not patentably distinct from each other because the bituminous composition in patented claims 1, 8, 10 and 12 comprise as essential components: bitumen (79 to 99.0 wt.%, may include 0 wt.% saponifiable or saponified carboxylic acids), a hydroxide XOH (0.3 to 0.9 wt.%), and at least one amine additive obtained by reaction of fatty acids of tall oil with polyethylene polyamine, i.e., amidopolyamines (0.2 wt.%), said percentages being based on the total weight of the bituminous composition .
Although the patent claims are silent on a composition consisting of claimed components in claimed amounts in one single embodiment, given that the patent claims include the components of the presently claimed invention in overlapping amounts, it would have been obvious have been obvious to one of ordinary in the art to prepare a composition consisting of the essential components therein in any amount within the disclosed range, including those of the claimed invention. In the case 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 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claims 5, 7 and 8, patent claim 1, while reciting that the additive is obtained by reaction of fatty acids of tall oil with a polyethylenepolyamine, is silent on an amidopolyamine of formula IV as claimed. However, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis). In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Regarding the claimed formula (IV), the patent discloses the following (col. 3):
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Thus, given the teaching in the patent on amidopolyamines of formula (IV), it would have been obvious to one of ordinary skill in the art to include a reaction product of tall oil fatty acids and polyethyleneamine within the scope of formula (IV) in patent claim 1, and thereby arrive at the claimed invention.
Regarding claim 15, the claimed limitation is met by patent claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762