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 Objections
Claim 3, 9, 13, and 19 are objected to because of the following informalities:
Claims 3 and 13 should be amended to recite the biomass-based carbonaceous material has a hydrogen to carbon molar ratio;
it is suggested Claim 9 be amended to recite “wherein the foamed has a cellular matrix, and the biomass-based carbonaceous material confers to the cellular matrix”;
“comprising” is misspelled in the preamble of Claim 19; and
for consistency, the second to last line of Claim 19 should be amended to recite the polyol-based dispersion.
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 – 8, 10, 19, and 20 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.
The metes and bounds of Claims 1 and 19 are clearly defined by the phrases “first prescribed amount” and “second prescribed amount”. With respect to the word “prescribed”, neither the claim nor instant specification provide a definition of what corresponds to a “prescribed” amount. The scope of the recited “prescribed” first and second amounts is consequently unclear. With respect to the words “first and second”, the Office submits that the use of the words “first” and “second” to describe the recited amounts appears to imply that there are multiple amounts of polymeric particles and multiple amounts of biomass-based carbonaceous particulate material, though the claim only recites a single amount of either. With respect to the word “amount”, the claims does not specify how this amount is determined or measured, i.e. it could possibly be a weight amount or volume amount. For the purposes of further examination, Claims 1 and 19 will be interpreted as simply setting forth an amount in parts by weight of polymer particles and an amount in parts by weight of biomass-based carbonaceous particulate.
As Claims 2 – 8 and 20 ultimately depend on Claim 1 or 19, they incorporate the subject matter thereof and are also therefore rejected under this statute.
There is also a lack of antecedent basis for “the” first prescribed amount set forth in Claim 10. The claims do not set forth a first prescribed amount prior to this recitation. For the purposes of examination, Claim 10 will be interpreted as setting forth the polyol composition is free of polymer particles dispersed in the base polyol.
There is additionally a lack of antecedent basis for “the foamed isocyanate-based polymer defined in Claim 19” set forth in Claim 20. The claims do not set forth a first prescribed amount prior to this recitation. For the purposes of examination, Claim 20 will be interpreted as setting forth the polyol-based dispersion of Claim 19.
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 12 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. Claim 12 sets forth the foamed isocyanate-based polymer of Claim 1 has an indentation force deflection that is within about 15% of that of a reference foam. However, this limitation is already set forth in independent 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.
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 – 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of U.S. Patent No. 12,098,235. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
It is clear that all the elements of instant Claims 1 – 8 are to be found in Claims 1 – 20 of U.S. Patent No. 12,098,235, as instant Claims 1 – 8 fully encompass Claims 1 – 20 of U.S. Patent No. 12,098,235. The difference between instant Claims 1 – 8 and Claims 1 – 20 of U.S. Patent No. 12,098,235 lies in the fact that the patent claims include many more elements, e.g. styrene-acrylonitrile polymer particles as the polymer particles and a D50 particle size range for the biomass-based carbonaceous particles, and are thus much more specific. Thus, the invention of Claims 1 – 20 of U.S. Patent No. 12,098,235 is in effect a "species" of the "generic" invention of instant Claims 1 – 8. It has been held that the generic invention is "anticipated" by the "species". See In Re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant Claims 1 – 8 are anticipated by Claims 1 – 20 of U.S. Patent No. 12,098,235, they are not patentably distinct from Claims 1 – 20 of U.S. Patent No. 12,098,235.
Claims 9 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of U.S. Patent No. 12,098,235. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
The claims of U.S. Patent No. 12,098,235 do not expressly set forth the biomass-based carbonaceous particulate material confers to the cellular matrix a load efficiency of at least 5 Newtons/weight% of the biomass-based carbonaceous particulate material. However, the claims of U.S. Patent No. 12,098,235 set forth a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. that the biomass-based carbonaceous particulate material confers to the cellular matrix a load efficiency of at least 5 Newtons/weight% of the biomass-based carbonaceous particulate material, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claims 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 – 20 of U.S. Patent No. 12,098,235. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variations upon each other.
Claims 1 – 20 of U.S. Patent No. 12,098,235 differ from the instant claims in that they set forth a foamed isocyanate-based polymer comprising the polyol-based dispersion, rather than the polyol-based dispersion itself. However, it is the Office’s position that it would have been obvious to a person of ordinary skill in the art to utilize the polyol-based dispersion set forth in Claims 1 – 20 of U.S. Patent No. 12,098,235 apart from the foamed isocyanate-based polymer. The motivation would have been that the polyol-based dispersion could be used in the preparation of additional types of products, e.g. isocyanate-based polymers which are compact/unfoamed.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2017/0058075; 2016/0200855; 2016/0053078; and 2009/0007484 were all cited during prosecution of the parent application.
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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/MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
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