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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/07/2024, 09/05/2024, and 10/08/2025 have been considered by the Examiner.
Status of Claims
Claims 1-20, filed on 08/07/2024, are under consideration.
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.
The claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/835,542 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because reference application discloses the same limitations as does the instant application except the temperature range for the second decomposition step is different. However, it is the position of the examiner that temperature is a result effective variable and as such can be optimized without undue experimentation. Discovery of optimum value of result effective variable in known process is ordinarily within the skill in the art and would have been obvious. Also, the reference application heats to 600-950°C in the second step which also includes heating to the instantly claimed lower temperatures of 300-450°C.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Also, the claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 19/507,675 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims include decomposition of diene rubber over Grubs-type metathesis catalysts, followed by thermal decomposition in absence of catalyst. The reference application uses 450-950 °C in the second step which touches the instant claimed temperatures of 300-450°C and establish a prima facie case of obviousness.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: no prior art was located to teach or suggest the claimed steps of decomposition of diene rubber over Grubs-type metathesis catalysts, followed by thermal decomposition in absence of catalyst at temperatures of 300-450°C.
US 11,203,679 and US 9,593,168 teach decomposing nitrile rubber with Ru/Os-carbene metathesis catalysts. However, no reference was found to decompose the product from metathesis decomposition of rubber under the claimed conditions of the second decomposition step.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALI Z FADHEL whose telephone number is (571)270-0267. The examiner can normally be reached M-F 9am-6pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, In Suk Bullock can be reached at 571-272-5954. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALI Z FADHEL/Primary Examiner, Art Unit 1772
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