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 § 102
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.
Claim(s) 1-8, 10 and 13-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jaskolski et al. (USPGPub 2018/0030323).
Regarding claims 1-6, 10 and 13-15, Jaskolski teaches a composition comprising 0.125-1.75oz of magnesium carbonate (~0.24-3.4tsp)[0022], 0.45-1.95oz rosin (~2.4-10.5 tsp), 30-95ml of isopropyl alcohol (~6-19tsp)[0023], 0.25-0.75tsp HEC [0024], 0.25-1tsp olive oil and 0.5tsp candelilla wax, where the candelilla wax would read upon a primary wax component, the rosin is a tackifier and olive oil is the softening agent wherein the composition reads upon the ranges and components claimed. Further it is noted that in the art, “gum rosin” is synonymous with pine tree rosin.
Regarding claims 7-8, it is noted that the “use” language of the claims is a “recitation of intended use”. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). In particular, the composition claimed is the same as that of the prior art and therefore is not differentiated from the prior art composition because of the recitation of intent. Further the prior art composition is seemingly as capable of being employed as claimed as the current composition. It is even further noted that the composition of Jaskolski is explicitly stated as suited for application to “hockey sticks” [0031].
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 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(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaskolski et al. (USPGPub 2018/0030323).
Regarding claim 12, the teachings of Jaskolski are as shown above. Jaskolski fails to teach wherein the amount of candelilla wax is in the range claimed. However, Jaskolski teaches that the candelilla wax makes the composition more useful for water activities, wherein presumably no wax is the least suited for water applications and greater amounts of wax being more suited for water applications. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of candelilla wax in the composition of Jaskolski within a range in order to control the water suitability of the composition of Jaskolski. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215. Further Jaskolski fails to teach the use of calcium carbonate powder or amounts of equivalent substances that meet the claimed range. However, Jaskolski does teach that moisture absorbing compositions in similar fields employ calcium carbonate or magnesium carbonate as an alternative to calcium carbonate [0011]. As stated above, Jaskolski does teach the use of magnesium carbonate in his composition. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the calcium carbonate of Jaskolski with the magnesium carbonate of Jaskolski as a simple substitution of one known component of a moisture absorbing composition for another wherein the results would be predictable based on the teachings of Jaskolski. Further, the amount of magnesium carbonate employed would both affect both moisture absorption as well as dictate the remainder of the composition that can be employed for other components such as those other listed in the rejection of claim 1, all of which have their own functions in the invention of Jaskolski. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of calcium carbonate in the composition of Jaskolski within a range in order to control the water absorption of the composition of Jaskolski as well as to control the collective qualities that may be provided by other components in the composition. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaskolski et al. (USPGPub 2018/0030323) as applied to claims 1-8, 10 and 13-15 above and further in view of Barnes et al. (USPGPub 2006/0107870).
Regarding claim 9, the teachings of Jaskolski are as shown above. Jaskolski fails to teach wherein the composition further comprises beeswax. However, Barnes teaches that it is known to further incorporate beeswax into “grip” [0004-0005] type compositions further comprising similar components to those present in Jaskolski such as candelilla wax and olive oil, wherein it is noted that the ratio of beeswax to candelilla wax in Barnes is roughly 1:2. Therefore it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to add the beeswax of Barnes into the grip composition of Jaskolski in the ratio employed by Barnes as a use of a known grip composition additive applied to a known grip composition in the same way.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 11 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12071546. This is a statutory double patenting rejection.
Conclusion
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/ANDREW J BOWMAN/Examiner, Art Unit 1717