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 .
DETAILED ACTION
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-8, 12-15, 18 and 19, drawn to a product configured to be propelled as a foam or spray from a container.
Group II, claim(s) 9, 10, 16 and 17, drawn to a method for producing the product of claim 1.
Instant “Use” claim 11 is drawn to non-statutory subject matter under US practice, and thus will grouped with the appropriate elected invention should they be amended to comply with 35 U.S.C. 101.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a product comprising at least one propellant precursor, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Spruyt et al. (EP0844197A1, disclosed by applicant). Spruyt et al. disclose a gas generating unit comprising at least two compartments, the first compartment and the second compartment; wherein the compartment comprises a carbonate and an acid as propellants (Abstract and column 4, lines 29-31).
During a telephone conversation with Hussein Akhavannik on 08/27/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-8, 12-15, 18 and 19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9, 10, 16 and 17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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) 1-7, 14, 15, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Spruyt et al. (EP0844197A1).
Spruyt et al. disclose an aerosol container having a gas generating unit sealed within the aerosol container, and wherein the gas generating unit generates gas to maintain or increase the internal pressure of the aerosol container (Abstract). Spruyt et al. disclose a first compartment containing an acid solution, and a second compartment containing a solid carbonate or bicarbonate (column 3, lines 3-6). Spruyt et al. disclose the carbonate/bicarbonate may be sodium, calcium or magnesium salts and the acid includes citric acid, ascorbic acid, sulphuric acid or mixtures thereof (column 2, lines 51-58). Spruyt et al. disclose the aerosol container is provided with an initial chare of a propellant gas to pressurize it internally; wherein the propellants include carbon dioxide, nitrogen and mixtures thereof (column 4, lines 25-30).
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) 1-8, 12-15, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Trumbore et al. (US Patent Pub. 201301157173) in view of Spruyt et al. (EP0844197A1).
Trumbore et al. disclose chemically stable formulations comprising a reactive propellant; wherein the formulations are delivered as an aerosol foam. The emulsions or compositions comprise reactive active agents for treating the skin (Abstract). Trumbore et al. disclose the composition comprises surfactants ([0007]).
Trumbore et al. differs from the instant claims insofar as they do not disclose wherein CO2 is released in situ from the propellant precursor in the container.
Spruyt et al. disclose an aerosol container having a gas generating unit sealed within the aerosol container, and wherein the gas generating unit generates gas to maintain or increase the internal pressure of the aerosol container (Abstract). Spruyt et al. disclose a first compartment containing an acid solution, and a second compartment containing a solid carbonate or bicarbonate (column 3, lines 3-6). Spruyt et al. disclose the carbonate/bicarbonate may be sodium, calcium or magnesium salts and the acid includes citric acid, ascorbic acid, sulphuric acid or mixtures thereof (column 2, lines 51-58). Spruyt et al. disclose the aerosol container is provided with an initial chare of a propellant gas to pressurize it internally; wherein the propellants include carbon dioxide, nitrogen and mixtures thereof (column 4, lines 25-30). Spruyt et al. disclose the gas generating unit is easy and cheap to manufacture. Spruyt et al. disclose the gas generating units are more environmentally friendly than HFC propellants (column 1, lines 16-26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the gas generating unit as the propellant of Trumbore motivated by the desire to provide an easy and cheap manufacture process and provide a more environmentally friendly alternative to HFC propellants as taught by Spruyt.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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, Sahana S. Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612
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