DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicants’ election without traverse of Group I (claims 20-29; “a preform” and “a bottle”) in the reply filed on 05/12/2026 is acknowledged.
3. Claims 1, 5-8, 11-12 and 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/12/2026.
Claim Objections
4. Claims 20 and 25 are objected to because of the following informalities:
As to Claim 20: The applicants are advised to replace the claimed “A preform” with the new phrase “A graphene reinforced polyethylene terephthalate preform”.
As to Claim 25: The applicants are advised to replace the claimed “A bottle” with the new phrase “A graphene reinforced polyethylene terephthalate bottle”.
Appropriate corrections are required.
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.
Double Patenting I
5. Claims 20, 22, 25, and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,104,036 (hereinafter referred to as “the patent”) in view of Jernigan et al. (US 2005/0065318)1.
The claims of the patent and the present application are directed to reinforced polyethylene terephthalate products comprising a polyethylene terephthalate (PET) (or a continuous matrix) and a dispersed reinforcement phase comprising graphene nanoplatelets at concentration of 0.0015 weight percent (wt%) to 0.1 wt% of the graphene reinforced polyethylene terephthalate product. The claims of the patent and the present application also recite that the PET comprises recycled PET.
However, the claims of the patent do not specify the product as including a preform and a bottle as required by the claims of the present application.
Nevertheless, Jernigan et al. disclose that it is known to extrude the polyethylene terephthalate composition to prepare bottle preforms having desired performance properties (Paragraphs [0003], [0006], [0017], [0053], and [0142]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to extrude the polyethylene terephthalate composition recited in the claims of the patent to prepare the bottle preforms having desired performance properties as suggested by Jernigan et al.
Double Patenting II
6. Claims 20 and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 7 of U.S. Patent No. 12,338,320 (hereinafter referred to as “the patent”) in view of Jernigan et al. (US 2005/0065318)2.
The claims of the patent recite a reinforced polyethylene terephthalate composite comprising a continuous matrix comprising a polyethylene terephthalate and a dispersed reinforcement phase comprising graphene nanoplatelets at concentration of 0.006 weight percent (wt%) which is encompassed by the presently claimed 0.0015 weight percent (wt%) to 0.1 wt% the graphene nanoplatelets.
However, the claims of the patent do not specify the product as including a preform and a bottle as required by the claims of the present application.
Nevertheless, Jernigan et al. disclose that it is known to extrude the polyethylene terephthalate composition to prepare bottle preforms having desired performance properties (Paragraphs [0003], [0006], [0017], [0053], and [0142]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to extrude the polyethylene terephthalate composition recited in the claims of the patent to prepare the bottle preforms having desired performance properties as suggested by Jernigan et al.
Allowable Subject Matter
7. Claims 21, 23-24, 26, and 28-29 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
8. The prior art made of record, namely, Hanan (US 2014/0080962)3, and not relied upon is considered pertinent to applicants’ disclosure. Specifically, Hanan only discloses polyethylene terephthalate-graphene nanocomposites (Paragraphs [0021]-[0025], and see also abstract).
Correspondence
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, 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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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 11/27/2024.
2 Cited in the IDS submitted by applicants on 11/27/2024.
3 Cited in the IDS submitted by applicants on 11/27/2024.
Prosecution Insights